1 Practical Impact of Recent PCT Changes on US Practice Maria Eliseeva Houston Eliseeva LLP American Intellectual Property Law Association October 15,

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Practical Impact of Recent PCT Changes on US Practice

Maria Eliseeva

Houston Eliseeva LLP

American Intellectual Property Law Association

October 15, 2004

Washington, DC

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Practical consequences of:

• Changes in the Preliminary Examination procedure

• Changes in the Power of Attorney requirements

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Changes in Preliminary Examination

• For applications filed prior to January 1, 2004, you get an International Preliminary Examination Report (IPER) only if you file a Demand

• For applications filed on or after January 1, 2004, you get an International Preliminary Report on Patentability (IPRP) regardless of whether you file the Demand.

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Under pre-January 1, 2004, practice, you could ignore the entire PCT process (e.g. not file a Demand) with little downside. Postpone foreign filing decisions is postponed by 18 months.

Is it still an option? Sure, but…

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File PCT application

Receive non-favorable ISR and WO

Do nothing

Receive non-favorable IPRP

Post January 1, 2004 scenario #1

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Under new practice, you ignore the PCT process at your peril. Failure to file a Demand in the face of an unfavorable ISR leads to three unfavorable documents in the file (ISR, WO, IPRP).

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Post January 1, 2004 scenario #2

File PCT application

Receive unfavorable ISR and WO

Amend underArticle 19

Do nothing

Receive unfavorable IPRP

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Amending claims under Article 19 will lead to publication of amended claims, which matters for pre-grant damages.

If the WO and the ISR are unfavorable,

amending claims under Article 19 will still result in the unfavorable IPRP.

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File PCT application

Receive unfavorable ISR and WO

File Demand Amend underArticle 19

File Demand

Amend/argue under Article 34

(Hopefully) receive favorable IPER

Post January 1, 2004 scenario #3

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Content of IPRP

• If you file a Demand, the IPRP is prepared by the International Preliminary Examining Authority. It takes your arguments (Art. 34) and claim amendments (Art. 19 and Art. 34) into account.

• If you do not timely file a Demand, the IPRP is prepared by the International Searching Authority (ISA). It is based upon your application as filed and no amendment is taken into account.

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Changes in the Power of Attorney Requirements

• Powers of attorney – RO, ISA, IPEA, IB may waive requirement for separate power of attorney

– US has waived the requirement • See January 2004 PCT Newsletter

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Consequences of waiver of the POA requirement

• Imagine filing a PCT application with 1 Corporate applicant and inventors A, B, C

• You have never spoken with B and C, in fact, they are not even employees of Corporation

• You have no POA from A, B and C

• You filed the IA in the RO/US

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What is a POA?

• Proof that you are authorized to act on behalf of applicants/inventors before the US Patent Office (in its capacity as a RO, or as an ISA, or as an IPEA).

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37 CFR § 1.34 Acting in a representative capacity.

• When a registered patent attorney or patent agent acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trade-mark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party in whose behalf he or she acts. In filing such a paper, the registered patent attorney or patent agent must specify his or her registration number and name with his or her signature. Further proof of authority to act in a representative capacity may be required.

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Back to the scenario with a corporate filer and inventors A, B, and C

• You sign the Request

• The corporation authorized you to file the IA

• A is an employee of corporation

• You have no idea who B and C are, you have never heard from them.

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37 CFR § 10.18

Signature and certificate for correspondencefiled in the Patent and Trademark Office.

(b) By presenting to the Office (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—

(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true…

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37 CFR § 10.23 Misconduct

• (b) A practitioner shall not: (4) Engage in conduct involving

dishonesty, fraud, deceit, or misrepresentation.

Signing a request = representationNot having authorization from parties listed

in the application = misrepresentation

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Question of validity of subsequent US patent in case where no POA was obtained from all inventors in the corresponding PCT case

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35 U.S.C. 111 Application.

• (a) IN GENERAL.—

• (1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.

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35 U.S.C. 363 International application designating the United

States: Effect.

• An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office except as otherwise provided in section 102(e) of this title.

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35 U.S.C. 373 Improper applicant.

• An international application designating the United States, shall not be accepted by the Patent and Trade-mark Office for the national stage if it was filed by anyone not qualified under chapter 11 of this title to be an applicant for the purpose of filing a national application in the United States. Such international applications shall not serve as the basis for the benefit of an earlier filing date under section 120 of this title in a subsequently filed application, but may serve as the basis for a claim of the right of priority under sub-sections (a) through (d) of section 119 of this title, if the United States was not the sole country designated in such international application.

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E-filing of PCT applications is now available in IB

• PCT applications may be e-filed in RO/IB

• Obtain serial number immediately

• Software works well (very familiar to previous users of PCT-EASY)

• XML tagging not required – you can file PDFs

• Filing fee reduction

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Why not e-file all your PCT applications in the RO/IB?

• You need to obtain a certified copy of priority document

• Foreign filing license issues

• But foreign filing license in substantially identical priority case will cover RO/IB filing

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Thank you for your attention

Questions or copy of this presentation –

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