Patent It Yourself - PDF Archive

328 | Patent it YOURSELF
to filing abroad in Convention countries. You may end
up using different approaches for different countries,
or the same approach for all. The chart above, Fig. 12B,
summarizes these alternatives. The lettered routes in the
explanation below are keyed to the paths in the chart (see
the legend at the bottom right of the chart). In essence, the
routes are:
Route A: This is the most common. File in U.S. Then file
in non-Convention countries before publication or sale.
(For more information about filing in non-Convention
countries, see Section F, above.) Then, within one year,
under the Paris Convention, file a PCT application to cover
the PCT countries and jurisdictions (including the EPO).
Select the PTO or EPO for the search. Then, by 30 months
from your U.S. filing date, file national applications (you’ll
have to hire agents and spend big bucks) in the EPO and
non-EPO PCT countries.
Route B: This is the same as Route A, except that within
19 months from your U.S. filing date, or three months from
the transmittal of the search report, elect Chapter II of the
PCT to get the application examined, either in the PTO or
EPO. Finally, file in the EPO and non-EPO countries within
30 months from your U.S. filing date.
Route C: This is the same as Route A, except that the PCT
is eliminated entirely and you file Convention applications
in the EPO and non-EPO countries within 12 months from
your U.S. filing date.
Route D: This is the same as Route C, except that you file
directly in the individual EPO countries (rather than the
EPO).
Route E: In addition, if you’ve filed a Provisional Patent
Application (PPA), and by the time almost one year elapses
from your PPA’s filing date you want to file in the U.S.
and abroad, you can do so in three basic ways: (1) File a
PCT application yourself, naming the U.S. and all other
desired PCT countries. File in non-PCT Convention
countries using agents. By 22 months from your PPA filing
date or three months from the transmittal of the search
report, you may elect Chapter II of the PCT and select
examination in the PTO or EPO. By 30 months from your
PPA filing date, file, via agents, national applications in the
EPO and non-EPO countries and file yourself in the U.S.,
claiming priority of your PCT application. (2) File separate
applications in the U.S. and PCT yourself. Continue as
in Route A for your PCT application. (3) File separate
applications in the U.S. and either (a) use agents to file
in non-EPO countries and the EPO (Route C), or (b) use
agents to file national Convention applications in individual
countries in Europe and elsewhere (Route D).
Let’s discuss each of these alternatives in more detail.
1. Route A: Non-Convention/Convention
(PCT and Non-PCT/Chapter II/National)
Route A is the most popular way to go. Not surprisingly, it’s
also the cheapest way to go in the short run, since you won’t
have to file national applications (with foreign patent agents
and the huge expense they entail—indicated by boxes with
bold lines on the chart) until 30 months from your U.S.
filing date. Under Route A, you file in the U.S. first and then
go abroad through the PCT, insofar as possible. Here’s how
it works for U.S. inventors:
• First file in the U.S. in the usual manner.
• Next file directly in any non-Convention countries
you desire, before your application or invention is
published, but after you get your foreign-filing license
or six months has elapsed from your U.S. filing date.
• Then, before one year from your U.S. filing date, file
a PCT request form and a separate “international
application” with the USPTO within 12 months from
your filing date. The application designates the PCT
member countries or jurisdictions (such as the EPO)
in which you desire coverage.
• The request and application are forwarded to the
“International Searching Authority” (a branch of the
PTO) or the EPO (if you’ve elected to have your search
made there) where an “international search report” is
prepared. If you select the PTO, the examination will
generally be done by the same examiner who handles
your U.S. application.
• Copies of the search report and application are
then forwarded to the countries designated in the
application. Cite any new references to the PTO on
your basic U.S. case through another Information
Disclosure Statement.
• Within 30 months from your U.S. filing date, you
must hire agents and prosecute the application in
the individual countries. You must also provide a
translation (except in the EPO) and must pay any
fees that are required. While separate prosecution is
required in each country, it’s commonly made easier
by the fact that the PCT member countries generally
rely on the international search and examination. It is
no longer necessary to elect Chapter II to obtain the
30-month delay, except for certain individual country
filings.
a. How to Prepare a PCT (International) Application
To prepare an international application under the PCT, first
prepare your original U.S. application and drawings in the
A4 international format. The main differences between the
PCT and U.S. national formats (both of which are accept-