Filing Requirements for a U.S. Patent Application Emphasis on National Stage Applications 2017 BIRCH, STEWART, KOLASCH & BIRCH LLP
TERMINOLOGY
Different Names (most common)? Regular Priority application (claiming priority via the Paris convention within 1 year of earliest priority) 119 application (based upon 35 USC 119(a)) Paris convention Priority application PCT; National Phase entry National Stage Application National Phase Application 371 Application (based upon the code for which it is filed under - 35 USC 371)
Acronyms for PCT ARIPO African Regional Industrial Property Organization for English-speaking Africa DO Designated Office EPC European Patent Convention EO Elected Office Chapter II IB International Bureau IPE International Preliminary Examination IPEA International Preliminary Examining Authority
Acronyms (cont.) IPRP International Preliminary Report on Patentability ISA International Searching Authority ISR International Search Report OAPI Intellectual Property Organization for Frenchspeaking Africa RO Receiving Office WIPO World Intellectual Property Organization WO of ISA Written Opinion of the International Searching Authority
Comparison
Filing Deadline - Example Priority Date (first filed application) January 1, 2013 International (PCT) Application (PCT) January 1, 2014 National Stage Application Deadline July 1, 2015 (30-months from earliest filing date) Be careful of your National Stage Deadline, not all designated states allow 30 months. This deadline is just an example.
National Stage Deadline The National Stage deadline is very important!! If the deadline is unintentionally missed the application will have to be revived.
National Stage Requirements (Rules) Requirements for a National Stage application are: Designation as a National Stage application; The national fee; Inventor s Declaration (can be filed later); Translation, if applicable (can be filed later); and Copy of International (PCT) Application (but only in certain circumstances, like filing before publication) Need to file a copy of the PCT/IB/308 form (2nd Notice), designating the US, if it is available, or a copy of the as-filed International (PCT) Application and PCT/RO/101
National Stage Filings DOCUMENTS
Application Requirements * Transmittal Form PTO-1390 * Application Data Sheet (ADS) Appropriate Fees (can be paid after filing) ADS required * Specification Application as published (WO document); or If not published, the application as originally filed * Drawings If applicable Translation Power of Attorney Can be submitted after filing with payment of a fee If available * Nucleotide and/or If applicable Amino Acid The RED( ) items Sequence SHOULD Listing be filed with the new application, if applicable * Large Tables or Computer Listings If applicable
PCT Documents (file if we have them/submit alphabetical and then numerical) PCT/IB/301 Notification of Receipt of Record Copy PCT/IB/304 Notification Concerning Submission Obtention or Transmittal of Priority Document * PCT/IB/306 Notification of the Recording of a Change * PCT/IB/308 First and Second and Supplementary Notice PCT/IB/311 Notification Concerning Availability of the Publication of the International Application PCT/IPEA/416 * PCT/IPEA/409 Notification of Transmittal of International Preliminary Report on Patentability International Preliminary Report on Patentability PCT/RO/101 Request (must be filed when there s no WO Published and/or PCT/IB/308 (2 nd Notice) * PCT/ISA/210 International Search Report PCT/ISA/220 Notification of Transmittal of the International Search Report and the Written Opinion of the ISA, or the Declaration * PCT/ISA/237 Written Opinion of the International Searching Authority
PCT Documents Not necessary to File PCT/IB/332 PCT/IB/402 PCT/IPEA/401 PCT/IPEA/408 PCT/RO/102 PCT/RO/105 PCT/RO/106 PCT/ISA/202 Information Concerning Elected Offices Notified of Their Election Notification of Receipt of Demand By Competent IPEA Demand Chapter II Written Opinion of the International Preliminary Examining Authority Notification Concerning Payment of Prescribed Fees Notification of Int l Application No. & of the Int l Filing Date Invitation to Correct Defects in the International Application Notification of Receipt of Search Copy These forms may be available from WIPO PatentScope: http://patentscope.wipo.int/search/en/structuredsearch.jsf
APPLICATION PAPERS
National Stage Transmittal Form PTO-1390 Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Submission Under 35 U.S.C. 371
Application Data Sheet (ADS) Covered in separate slides essential.
Specification Specification Application as published (WO document); or If not published, the application as originally filed Using the Publication? Confirm all sections are in the copy Description Claims Abstract Drawings (if applicable) Confirm all pages are legible Physically count and review the pages
Specification (cont.) There are times in a National Stage application when no specification (the traditional idea of a specification may be different) needs to be submitted, for example: if the original application was filed/published with an English language specification, you can simply submit the PCT/IB/308 (2 nd Notice) form; OR if the application is not in English and you are NOT submitting the English translation with the application, you can simply submit the PCT/IB/308 (2 nd Notice) form.
Specification (cont.) Applicant may submit a copy of the international (PCT) application as published instead of a copy of the application as originally filed, UNLESS: Article 19 Amendments were filed amending the abstract and/or title when the ISR was prepared and the revised abstract and/or title is published; then the Written Opinion publication cannot be used as the originally-filed application.
If either box is checked, the publication cannot be used as the originally filed application. Form PCT/ISA/210
PCT/IB/308 BSKB files a copy of form PCT/IB/308 (First and Second and Supplementary). The first notice states NO designations were made. If we do NOT have the second notice, we file a copy of the International (PCT) Application as published. If neither of these are available: we file the International (PCT) Application as originally filed; AND a copy of PCT/RO/101 (PCT Request)
US Designated
Translation The English translation of the International Publication MUST be a literal translation What this means is that it must be an exact translation of the International Publication No changes to the content can be made in the translation Content changes must be made by Preliminary Amendment
Declaration, Assignment and Power of Attorney There are different permutations for these documents. Imagine 3 buckets each needs to be filled. Declaration Assignment Power of Attorney
Declaration Pre-AIA Declaration procedures - any application having an effective PCT filing date prior to September 16, 2012 no need to clutter up your minds, these will not be discussed. Just know that the requirements are different. AIA Declaration procedures any application having an effective filing date or a PCT filing date on or after September 16, 2012.
Different Scenarios If the Applicant is Required Forms Assignee Combined AIA Dec/Assignment and POA Inventor Combined AIA Dec/Assignment and POA (Assignee handling prosecution) Inventor (no Assignee) AIA Dec and POA Regardless, the Declaration must contain specific language required by the AIA. The suitable forms may be downloaded from BSKB s website. See next page for actual language and an example
Declaration Requirements The Declaration for a National Stage application can be either: a standard Declaration; or a Declaration under rule 4.17(iv) that is filed during the international phase. If you do not receive a Declaration, check PatentScope to see if a 4.17(iv) Declaration is available. The inventor/applicant/assignee address identified on the Declaration/Assignment documents should be used IF different from the client s instructions (unless a PCT/IB/306 form indicates a change).
the application was made or was authorized to be made by the affiant or declarant; such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application; and The undersigned hereby acknowledges that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.
Assignment Generally, the Assignment can be separate from the Declaration, but it is also possible to use the combined Declaration/Assignment document available from BSKB s website.
Combined Declaration/Assignment
Slight variation Declaration of Inventorship If Applicant files a Declaration of Inventorship, a Power of Attorney is still required Make sure the Declaration (correct form may be downloaded from BSKB s website) has the new language required by the AIA changes: (1) the application was made or was authorized to be made by the affiant or declarant; and (2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.
Power of Attorney - most common scenario 82B
Drawings As in Utility applications, you should always compare your actual drawings to the Brief Description of the Drawings located in the Specification Make sure that all sheets or drawings and figures have been received and are described in the specification Drawing changes can be made in an Article 34 Amendment. Be sure to review the Amendments for any changes to the drawings!
Sequence Listings Sequence Listings typically occur in Biotech cases. They are an important part of a specification.
Assignment If separate, review the Assignment for completeness Are all inventors listed? Spelled correctly and match the inventors on the Declaration Might be same form as Declaration Did all inventors sign and date the document? Is the Assignee name and address complete? Is the Title of the invention complete and accurate?
PCT/IB/306 Notification of the Recording of a Change If issued, this document should ALWAYS be filed Indicates that bibliographical data was corrected/changed during the International Stage Examples of the information changed Name Address Nationality Adding/Deleting an inventor Change of Applicant Generally, we cannot make these changes to the National Stage application without this form
PCT Amendments? International Preliminary Report on Patentability (IPRP) The IPRP is issued 3 months from the International Search Report or 22 months from the priority date, whichever is later Chapter 1 (without Demand) form PCT/IB/373; or Chapter 2 (with Demand) form PCT/IPEA/409 (PCT/IPEA/416 coversheet) International (PCT) Application Amendments Article 19 (claims only) Article 34 Amendments (with Demand) Letter to the USPTO submitting the Amendments
PCT/IB/373
PCT/IPEA/409
Preliminary Amendment Amend/Correct the Title, if needed Amend the claims, if needed Incorporate Article 19 and/or 34 Amendments Remove improper multiple dependencies from the claims to avoid unnecessary USPTO fees
Cross-Reference To Related US Applications When claiming priority to a US Application (e.g., perhaps a provisional application), a Cross-Reference paragraph must be inserted into the specification by way of a Preliminary Amendment It is not necessary in to insert a Cross Reference paragraph identifying the international (PCT) application or foreign priority applications
Title - Amendments Applicant may change the Title of the Invention when entering the National Stage (instead of during the International Stage) The client may try to submit a new title with an English language specification This is generally not accepted by the USPTO, unless a Preliminary Amendment is filed
Article 19 Amendments Article 19 Amendments are made only to the claims. The amended pages will be included in the International (PCT) Application as published. The order letter and the publication should indicate that the application includes Article 19 Amendments. If we wish to incorporate the Article 19 Amendments into the application, we must submit: A copy of the amended claims, and An English translation (if applicable) with the application The USPTO is very inconsistent in entering Article 19 Amendment, so our policy is to enter such claims via a Preliminary Amendment.
Article 19 Amendments (cont.) The English translation for the Article 19 Amendments cannot be filed at a later time. Provide copies of Article 19 Amendments using the Letter Submitting Article 19/34 Amendments, even if you are filing a Preliminary Amendment to amend the claims. If not already noted, stamp the Amended Sheets with the Amended Sheet stamp.
Article 34 Amendments Article 34 Amendments are filed with the Chapter II Demand, or in response to the Written Opinion. The amended pages will appear as an annex to the International Preliminary Report on Patentability (PCT/IPEA/409). If the Applicant wishes to incorporate the Article 34 Amendments into the application, we must submit a copy of the amended pages with the application, in order for them to be made of record in the US: A translation of the annexes must also be provided, but the translation can be submitted after the filing of the application.
Article 34 Amendments (cont.) Article 34 Amendments can include amendments to the specification, claims and drawings We only amend the claims with a Preliminary Amendment Provide copies of Article 34 Amendments using the Letter Submitting Article 19/34 Amendments Even if you are filing a Preliminary Amendment Copies of the Amended Sheets should be attached to the Letter If not already noted, stamp the Amended Sheets with the Amended Sheet stamp.
Priority Document It is NOT necessary to submit a certified copy of the priority document in National Stage applications: The certified copy is either filed electronically or provided to the International Bureau in the PCT application. The International Bureau provides a copy to the USPTO for National Stage filing. Form PCT/IB/304 indicates that the priority document has been filed in the International (PCT) Application and can be used to provide proof to the USPTO.
Form PCT/IB/304 Make sure a Date of Receipt has been entered Read the fine print.
New Case Filing Quick Reference List Form PTO-1390 Application Data Sheet Power Of Attorney and Transmittal (if any) Preliminary Amendment (if any) Article 19/34 (if any) PCT Documents (in numerical or alphabetical order) Information Disclosure Statement Transmittal (if any) Information Disclosure Statement SB/08 form Foreign Office Action/Search Report Foreign References Non-Patent Literature References Specification (Specification, Claims & Abstract) Declaration (if any) Drawings (if any) Sequence Listing (if any)
QUESTIONS