Comprehensive PCT Practice: How to Master Its Challenges

03 Oct 10 - 05 Oct 10
Renaissance Esmeralda Resort and Spa
Indian Wells, CA

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Please note that the faculty members listed for this course are subject to change prior to the actual course date.

PCT is firmly established as the most cost-effective instrumentality for obtaining international patent protection and for creating an international patent portfolio. The number of PCT Contracting States is currently 139 and growing. It currently includes substantially all of the industrialized countries of the world.

This Comprehensive PCT course features those PCT procedures and strategies best designed to obtain cost-effective protection for inventions in multiple countries. The Comprehensive PCT course concentrates on filing strategies and benefits and includes new PCT procedures such as the confirmation of incorporation by reference of missing portions of an international application which are found in the priority document, and the restoration of a right of priority of an international application filed within two months after the priority year.

The PCT course explains: (a) when use of the PCT may not be appropriate; (b) whether a regular or a provisional U.S. application should be filed first; (c) which other effective filing routes are available; and (d) the unity of invention concept under the PCT. Other pressing topics and recent changes in practice will be covered, as well as practical guides for good international patent practice. While a basic working knowledge of the PCT procedure is useful, the course is valuable for both new and experienced users.

Although 139 PCT Contracting States are automatically designated upon filing, those countries in which patent protection is desired can be decided late in the proceeding, near 30 months from the priority date. The decision can be based on a fuller awareness of the state of the art that is cited in the international search report, and on the reasonable likelihood of obtaining a patent in view of the written opinion issued with the international search report. In addition, the optional international preliminary examination provides another opportunity to argue and amend the application prior to entry into the national offices. The technical advantages of, and economic prospects for, the invention can thereby be determined more accurately due to the experience and increased knowledge acquired during the additional time provided under the PCT.

A U.S. applicant can file an international application in English and obtain an international search and an examination by the USPTO, the Korean Patent Office, the Australian Patent Office, or the EPO. Proceeding in this manner, the U.S. practitioner can control fully the progress of the application from the filing, through the search and optional preliminary examining stages. This can facilitate the patenting process before the elected national or regional offices.

The U.S. patent practitioner’s control of international patent practice is accompanied by substantial cost savings, through delayed costs of translations, National Office and agent fees, as well as through having the international phase work done centrally by the U.S. practitioner rather than in the offices of foreign patent attorneys and agents.

This course is a combination of the Basic and Advanced Patent Cooperation Treaty Practice courses previously offered by PRG.

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About PRG:

Patent Resources Group (PRG) was founded in 1969 by Prof. Irving Kayton