BENEFITS OF PCT FILING

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BENEFITS OF PCTFILING
Samson Helfgott KMZ Rosenman New York, NY
AIPLA Annual MeetingOct. 2004Washington, D.C.
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• Patent Cooperation Treaty (PCT)
• - over 120 member countries
• - provides additional 18 months after priority
  year (30 months) before making foreign
  filing decisions
• - some countries permit 31 months
• - While it adds additional International Costs
  (about 3,000-5,000) defers costs of national
  filing (25,000-50,000)
• - Preserves rights in all member countries
• - Gives client more time to assess importance of
  invention and make better decisions on
  foreign filing
• - Can file in English with US as Receiving
  Office
• - During International Phase will get an
  International Search

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- Can use U.S. or EPO for International Search -
If use U.S., generally same search as U.S.
search. However, you may get some
additional references which are not prior art
under U.S. law but are prior art
elsewhere - If use EPO for International Search
will get a second search in addition to
U.S. EPO costs more but will get reduction if
you proceed into EPO after the
International Phase - Can optionally request
Examination (Chap II) during PCT to amend
claims and get Examiners Examination Report on
Amended Claims - All countries can now be
reached through Chap. I - Many countries will
accept the Search (and Examination) in
place of their own Search (and Exam)
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SELECTING SEARCH AND EXAMINATION AUTHORITY

• US and EPO generally available
• EPO will not accept computer related and business
  method patents
• Use EPO if most probably you will foreign file,
  so that you will get a US EPO search before
  national stage
• Use US if mainly interested in buying time and
  not sure of foreign filing. Usually US PCT
  will be same search.

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WHEN TO USE CHAPTER IIUNDER NEW EISPE SYSTEM

• Whenever interested in amending Claims in
  International Phase - Will file in many
  non-prosecuting countries - Will file in many
  prosecuting countries and uniform amendments
  needed to avoid references - When believe
  claims are too broad vs. prior art that you are
  aware of - If you believe clean IPRP will
  help licensing or other exploitation - To
  save some cost on National entry

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CONCERNS WITH NEW EISPE SYSTEM

• Unsure how states will accept new IPRP
• Unsure of uniformity of IPRPs from different
  ISAs
• Unsure of timing receipt of ISR/IPRP to have
  adequate time for Chapter II
• Unsure if ISAs will really give dialogue by
  providing a second Written Option in Chapter II
  before IPRP
• Difficult docketing for Chapter II

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CONCERNS WITH NEW AUTOMATIC DESIGNATION SYSTEM

• Is there a difference if US is automatically
  designated in the PCT?
• What effect of FESTO if US is designated?
• Is it worthwhile withdrawing US designation?

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WITHDRAWAL MATRIX
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STRATEGIES FOR FOREIGN FILINGCOST REDUCTIONS

• Different available routes for foreign filing
• Combining available tools
• - Provisional Application
• - PCT
• - EPC
• - Paris Convention
• Deferral is generally to the clients benefit
• - More knowledge on Invention, Competition,
  Markets, etc.
• - Cases are dropped
• - Use PCT wherever possible

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Benefits
Concerns
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PCT
Outside US
US Prov.
US
Concerns
Benefits
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Contact Information for Samson Helfgott Director
of Patents KMZ Rosenman 575 Madison Ave. New
York, N.Y., 10022 [phone] Samson.Helfgott_at_
KMZR.com Disclaimer This presentation does not
constitute any specific legal or business advice.