Best way to nationalize pct applications in

Nationalizing PCT Applications in the US

Which is Better, 371 Route or Bypass CON Route?

Nationalizing PCT Applications in the US

Which is Better, 371 Route or Bypass CON Route?

371 Nationalization v. Bypass Continuation

Let’s get ready to…

…Training- Review of Some of the Basics

PCT Applications- Nationalization Routes

• PCT Applications that designate the US areconsidered US applications, so...

• Can Nationalize under 35 USC 371- traditional nationalization- a371 nationalization is technically the same application as the PCTapplication

• Can file a “Bypass CON”- a continuation application that claimspriority under 35 USC 120 to the PCT application as acontinuation application of the PCT application

• 35 U.S.C. 363 provides that "[a]n international applicationdesignating the United States shall have the effect, from itsinternational filing date under article 11 of the treaty, of anational application for patent regularly filed in the Patentand Trademark Office....“ --See, MPEP 1895

PCT Applications- 371 Nationalization Route

PCT Application

International Phase National Phase

US National Stage

Transmittal

-Same Int'l App. No.-Assigned New US App. No. (for tracking)-Claims & Spec. amendments are based onthose during international phase.-Generally, do not need a new IDS for Refs.cited in Search Report/Written Opinion (as longas transmitted to USPTO).-Generally, do not need to resubmit certifiedcopies of foreign priority documents as long astransmitted to the USPTO (but may need tosubmit verified translation).

Treated as if the Same Application

PCT Applications- Bypass Continuation Route

PCT Application

International Phase

ContinuationApplication

“This application is a continuation ofInternational Application No. PCT/...

Treated as a New Application

CON.

-New US App. No.-Claims & Spec. amendments are based on what is filed- amendmentsduring international phase do not count.-Need a new IDS for Refs. cited in Search Report/Written Opinion.-Need to resubmit certified copies of foreign priority documents and mayneed to submit verified translation.

The Match- Let’ s Get Ready to…. Compare

Round

1

…Filing Requirements

PCT Applications- Filing Requirements

• 371 Nationalization

• Transmittal (PTO-1390)

• Filing Fees- Filing, Search,and Examination fees, etc.

•May also need..

• Preliminary Amendment

- to remove multipledependent claims

• Bypass CON

• Application- specification,claims, abstract & drawings

• Need priority claim

• Filing Fees- not required

371 Transmittal

…Practical Issues

Round

2

PCT Applications- Practical Issues Filing


• Sometimes, not sure which claimsare pending due to amendmentsduring the international phase

• Have to deal with multipledependencies

• Not familiar with transmittal

• Do not need to submit copy of theapplication and other paper work-just makes USPTO file messy

• No new matter allowed (i.e., noCIP’s)

• Bypass CON

• Standard practice

• Allows addition of newmatter (CIP) –see, MPEP1895

…Foreign Certified Copies

Round

3

Certified Foreign Priority Documents

• Easily missed- need to check PAIR– If Examiner comes across intervening reference, they may

request foreign priority documents (to show entitled toearlier date)

– Otherwise, no notice!

• To Perfect a Foreign Priority Claim

• USPTO Needs a Certified Copy

1. Paper Certified Copy, OR

2. Patent Document Exchange (PDX) Request- ElectronicTransfer to USPTO (automatic now)- but some countriesnot yet participating.

• Verified English Translation- for non-English foreign prioritydocuments

PCT Applications- Foreign Certified Copies


• Certified copies of foreignpriority applications are notrequired so long as theInternational Bureautransmits the copies to theUSPTO.

• If priority application is not inEnglish, you will still need totransmit a verifiedtranslation.

• Bypass CON

• You will need to submit acertified copy of foreignpriority application

• BUT now have PatentDocument Exchange(PDX) program with amajority of countries

• USPTO will nowautomatically request

• If priority application is not inEnglish, you will still need totransmit a verifiedtranslation.

…After Filing Formalities

Round

4

PCT Applications- After Filing Formalities


• Filing Receipt takes a longtime to receive

• Signed Declaration- will notreceive a filing date until asigned declaration is filed(hurts patent term as well)

• Bypass CON

• Filing Receipt- processedrelatively fast

• Signed Declaration- filingdate is not based on whendeclaration is filed

• Filing Fees- can file later

PCT Applications- After Filing Formalities

• 371 Nationalization•Publication• Claim amendments made at the

time of nationalization via aPreliminary Amendment mightbe published (or not) at thediscretion of the USPTO.

• Normally, the application ispublished without the amendedclaims from the PreliminaryAmendment.

• This is a BIG problem becauseyou might time from yourdamages calculation forprovisional rights.

• Bypass CON• Publication• As long as the amended

claims are incorporated intothe body of the application(i.e., not via a PreliminaryAmendment), they will bepublished.-Any new matter questions-

you can submit remarks.• Eliminates the problem with

damages calculations.

…Information Disclosure Statements

Round

5

PCT Applications- IDS Comparison


• Do not need to submit IDS forreferences cited duringinternational phase (e.g., in thesearch report) so long asUSPTO Form PCT/DO/EO/903indicates search resultstransmitted to national file.

•Still probably good practice tosubmit IDS becausereferences will not be listed onthe face of the patent unlesscited on IDS. --see, MPEP609.03

• Will need to submit IDS for newreferences

• Bypass CON

• Need to submit an IDS

• “When filing a continuing application that claimsbenefit under 35 U.S.C. 120 to an internationalapplication that designated the U.S. (see MPEP§ 1895), it will be necessary for the applicant tosubmit an information disclosure statementcomplying with 37 CFR 1.97 and 1.98 in thecontinuing application listing the documentscited in the international search report and/or theinternational preliminary examination report ofthe international application if applicant wishesto ensure that the information be considered bythe examiner in the continuing application.<“--MPEP 609.02

• Will need to submit IDS for newreferences

…Restriction Practice

Round

6

PCT Applications- Restriction


• Relies on PCT unity ofinvention standard

• Usually results in lessindependent claims

• This can cause problemsbecause US examiners maynot be familiar with thestandard and incorrectly useUS standard restrictionpractice

• Bypass CON

• Uses US standard restrictionpractice (independent &distinct)

• On average, moreindependent claims- morepermissive

• US Examiners are familiarwith the standard

…Prosecution & Fees

Round

7

PCT Applications- Prosecution & Fees


•Totally clean search report/opinion(i.e., all claims are patentable)- veryunlikely

• May receive marginal filing feediscount if have clean SearchReport/Written Opinion by US as ISA

•$320 Savings US/ISA•$650 Savings other normal ISA’s

•New- May use PCT-PPH to speedup examination when originatingapplication is filed in certaincountries (JPO, EPO, etc.)• No fee now required

• Bypass CON

• Bypass route is the only way touse traditional acceleratedexamination (371 will not work)--See, USPTO’s AcceleratedExamination FAQs

• Clean written opinion- still pay thesame fees (Rare)

• PCT-PPH available for bypassapplications as well

…Patent Term Adjustment

Round

8

PCT Applications- Patent Term Adjustment


•Will lose patent term if:

• Do not request expeditedexamination (check the rightbox on transmittal).

• File signed declaration afternationalization date.

• Bypass CON

• Will only lose patent term iffile signed declaration morethan 3 months after maildate of missing parts.

Quick Patent Term Adjustment Refresher

• 35 USC §154(b)(1) Periods• (A) Guarantee of prompt USPTO responses- 14 months for

USPTO to send an Office Action or Notice of Allowance (plusvarious 4 month periods)- Examination Delays

• (B) Guarantee of no more than 3-year application pendency-USPTO fails to issue patent 3 years after actual filing date

• No Double Counting When Periods Overlap• § 154(b)(2)(A) "[t]o the extent that periods of delay attributable to

grounds specified in paragraph (1) overlap, the period of anyadjustment granted under this subsection shall not exceed theactual number of days the issuance of the patent was delayed."

Wyeth v. Kappos (Fed. Cir. 2009)

Issue: When does the overlap occur?USPTO

37 CFR § 1.703(f)- B guarantee period starts at the time ofthe filing of the application, not 3 years after the filingdate.

You only get the greater of the A or B periods

USPTO – 3 Years PTA

OverlapHere

OverlapHere

Filingdate

14 mo.date

OfficeActionissued

3 yeardate

Issuefee

paid

4 mos. fromissue feepayment,patentshould issue

Issuedate

A Delay

B Delay

A Delay


Federal Circuit

A & B overlap only occurs after 3 years from the filing date.(A+B Formula)

1 Year USPTO – 3 Years PTA

Filingdate

14 mo.date

26 mo.OfficeActionissued

3 yeardate

Issuefee

paid

6yearsissuedate

A Delay

B Delay

A Delay

OverlapHere

4 mos. fromissue feepayment,patentshould issue


• USPTO Response• USPTO will be processing recalculation requests under

an interim procedure that is available to a patenteewhose patent issues prior to March 2, 2010, and whorequests it no later than 180 days after the issue date.

• This procedure is available only for alleged errors incalculation that are specifically identified in Wyeth.

• Information on requesting a recalculation of patent termis on the USPTO Web site athttp://www.uspto.gov/patents/announce/pta_wyeth.pdf.


• USPTO Wyeth PTA Form PTO/SB/131

Novartis Challenges Interim Procedure

• Novartis• "[t]hese interim procedures included an

expedited, informal procedure for seekingrecalculation of PTA solely on the basis ofWyeth, but extended that remedy only topatents issued on or after September 2, 2009."… it would “deny as untimely any request forrecalculation of patent term adjustmentindicated on a patent that is not filed within180 days of the day the patent was granted."

Japan Tobacco Petition

USPTO Miscalculating Period B for PCT 371 National Stage Applications

Originally, USPTO considered the B Period filing date= when an internationalapplications fulfilled the requirements of 35 U.S.C. § 371 (e.g., filed signedOath/Dec.).

BUT, 37 C.F.R. § 1.702(b) states that "the term of an original patent shall beadjusted if the issuance of the patent was delayed due to the failure of theOffice to issue a patent within three years after the date on which theapplication was filed under 35 U.S.C. 111(a) or the national stagecommenced under 35 U.S.C. 371(b) or (f) in an international application.”

Section 371(b) states that subject to § 371(f), "the national stage shallcommence with the expiration of the applicable time limit underarticle 22 (1) or (2), or under article 39 (1)(a) of the [PCT].“ = 30Month Chapter II Deadline

So the B-Period filing date for 371 national stages should be the 30-MonthChapter II deadline (if filed under 371(b)-- more later)


USPTO

USPTO relents- B-delay should be calculated based on the dateon which the national stage commenced, not the date onwhich the requirements of § 371(c) were fulfilled.

Chap IIDeadline

(30 Months)

File SignedDeclaration-satisfy 371(c)

3-Year B-Period


PCT Patent Term Landmines

B-Period Delay Landmine- Early 371 Nationalization

If Nationalize under 371 before 30-month chapter II deadline andsatisfy 371(c) requirements (e.g., pay fees, signed Declaration,etc.), you still need to expressly request early processingunder 371(f) to get the nationalization date for B-Delay filing date.

If not, B-Delay filing date will be based on the Chapter II (30-month) deadline & not the earlier nationalization date.

Contrast regular utility or bypass CON- B-Period filingdate is the actual filing date of the application.


B-Delay Period Landmine

Nationalize PCT Application before the Chapter II Deadline

Satisfy 371(c)- file signed declaration, etc.Expressly request early processing (check the

box on form)

Chap IIDeadline

(30 Months)

3-Year B-Period

Nationalize

B-Delay filing date startsbefore Chapter II Deadline


B-Delay Period LandmineNationalize PCT Application before the Chapter II

Deadline BUTFail to satisfy 371(c) ORFail to expressly request early examination

Chap IIDeadline

(30 Months)

File SignedDeclaration-satisfy 371(c)

3-Year B-Period

Nationalize

B-Delay filing date startson Chapter II Deadline


B-Delay Period Landmine- COMPARE

Instead file via the bypass CON route BUT

Fail to file signed declaration ORFail to expressly request early examination

Chap IIDeadline

(30 Months)

File SignedDeclaration

3-Year B-Period

Bypass CONFiling Date

B-Delay filing date startsbefore Chapter II Deadline

PCT- Patent Term Adjustment

PCT Patent Term A-Delay Landmines

A-Delay Date is still based on fulfillment of national requirementsunder 371(c).

For example, if you do not file a signed declaration when thePCT application is nationalized, you lose A-term until youfile the signed declaration.

Contrast to a regular utility or bypass CON- where you do notlose A-term so long as you file the signed declarationwithin 3-months of Notice to File Missing Parts

A-Delay Period Landmine

Nationalize PCT application under 371

Fail to file signed declaration withnationalization


Chap IIDeadline

(30 Months)

File SignedDeclaration

Nationalize

A-Delay- lose term- untilfile signed DeclarationLose Term

A-Period


A-Delay Period Landmine- COMPARE

Instead file via the bypass CON route

Fail to file signed declaration when application filed

File signed declaration 1-month after missing parts deadline

Chap IIDeadline

(30 Months)

File SignedDeclaration w/ 1-MonthEOT + surcharge

Bypass CONFiling Date

DO NOT LOSE ANYDO NOT LOSE ANYAA--TERM!TERM!

2 Month DeadlineFor Missing Parts

A-Period

…And the Winner is…

PCT- 371 Nationalization or Bypass CON?

What is the best way to nationalize a PCT ?Answer: Generally, bypass CON!!!

371Nationalization

Bypass CONSimplicity

PDX

Patent Term

US Restriction...

Want to know more?Chuck SchmalPatent Attorney

Woodard, Emhardt, Moriarty, McNett & Henry LLPChase Tower

111 Monument Circle, Suite 3700Indianapolis, IN 46204

[email protected]

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