june 2015 patent cooperation treaty (pct) how to file a pct application

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June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

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Page 1: June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

June 2015

Patent Cooperation Treaty (PCT)

How to File a PCT Application

Page 2: June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

Generally two ways to prepare/file the "paperwork" for a PCT application. PDF forms (e.g., Request, transmittal, etc.)

PCT-SAFE (SAFE = Secure Applications Filed Electronically) software helps to prepare the electronic forms for filing. Two modes:

– Fully electronic mode: The description, claims, abstract and drawings are attached in PDF, TIFF or XML format.

– PCT-EASY mode: The request form as well as the application body are submitted on paper, accompanied by a physical medium (floppy disk, CD, etc.) which contains a zip file with the request form, the abstract and a log file created through PCT-SAFE.

For ease of viewing, the presentation will show the PDF forms.

How to File a PCT Application

Page 3: June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

Application (format for A4 Paper and line nos.) Specification- Format A4 paper & line numbers Claims Drawings- add drawing sheet numbers Abstract- add reference numerals

Transmittal Request Fee Transmittal Declaration(s) (optional)

How to File a PCT Application- Paperwork

Page 4: June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

How to File a PCT Application- Paperwork Transmittal

USPTO= RO IB= RO

Foreign Filing License Screening

Same but Different

Page 5: June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

How to File a PCT Application- Paperwork Request- Page 1

Attorney identified- includecontinuation sheet foradditional attorneys

Identify the Applicant forspecific State(s)- Check

Supplemental Box & include continuation

sheet for other Applicants

Page 6: June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

How to File a PCT Application- Paperwork

Identify InventorsNOTE: Now US Companiescan be Applicants, so US

inventors should be usually“inventor only”

Identify additionalApplicant(s)

Request- Further Applicants & Inventors

Notice Last Names ALL CAPS

Page 7: June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

How to File a PCT Application- Paperwork

Explain where eachApplicant is designated

Request- Supplemental Box

Identify Other Patent Attorneys

(from page 1)

Page 8: June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

Request- Designations & ISA

How to File a PCT Application- Paperwork

Ask RO transmit certified copy of

priority document(s)

Priority Claim Here

Pick ISA

Miss 12 Month DeadlineRestore Priority Here

Notice Date Format

Page 9: June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

Request Transmit Prior Search

Results Declarations

How to File a PCT Application- Paperwork

Identify Declarations

Page 10: June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

How to File a PCT Application- Paperwork Request - Sample Declarations

Page 11: June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

Request Checklist Signature

How to File a PCT Application- Paperwork

FIG. # to Appear on PCT Publication

Itemize What is Filed

Sign Here!

Page 12: June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

How to File a PCT Application- Paperwork Fee Calculation Sheet

Notice AdditionalSheet Fees are Common

If USPTO is RO, then can charge to USPTO

Deposit Account

Search Fee ChangesDepending on ISA

Page 13: June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

Need More Information?

Please Contact:

Chuck Schmal ([email protected])

Woodard, Emhardt, Moriarty, McNett & Henry LLP111 Monument Circle, Suite 3700

Indianapolis, IN 46204(317) 634-3456

www.uspatent.com

Page 14: June 2015 Patent Cooperation Treaty (PCT) How to File a PCT Application

June 2015

Patent Cooperation Treaty (PCT)

How to File a PCT Application