Patent It Yourself - PDF Archive

ChaPter 12 | Going ABROAD | 329
able for U.S. applications) are the paper and drawing size
and margins. (These differences are detailed in Chapter 10.)
The World Intellectual Property Organization has
software (“PCT-Easy”) that enables you to pay somewhat
reduced fees and automates the process of completing the
PCT filing forms. You can download it (http://pcteasy.wipo.
int/en/index.html), but so far I have not been able to use it
and the USPTO does not support it.
You can file a PCT application on EFS-Web or by
mail. If you want to file by mail, obtain and complete a
multipage “Request” (Form PCT/RO/101) including the
Fee Calculation Sheet and the Transmittal Letter (Form
PTO 1382) from the PTO’s website (www.uspto.gov). Click
“Patents,” then click “PCT.” The form can also be obtained
from Mail Stop PCT, Commissioner for Patents, P.O. Box
1450, Alexandria, VA 22313-1450, Phone 571-272-4300 or
Fax 571-273-0419. Ask for the latest fees when you call,
or you can find these in the latest Official Gazette on the
PTO’s website. Complete the forms (full instructions and
examples are attached), requesting the PTO to prepare a
certified copy of your U.S. application for use with your
PCT application, and attach a copy of your application in
PCT (A4) format (with drawings) and a credit card payment
form or check payable to the Commissioner for Patents for
the international application filing fees as computed on the
Fee Calculation Sheet—the last page of the Request form.
To file a PCT application by EFS-Web, first prepare a PDF
copy of your application and drawings in A4 size. Then
complete the “Request” (Form PCT/RO/101) including
the Fee Calculation Sheet and Transmittal Letter (Form
PTO 1382) from the PTO’s website (www.uspto.gov). Full
instructions are on the forms. Then file the forms (all must
be in PDF format) on the PTO’s site (http://www.uspto.gov/
patents/ebc). You will be able to pay the fees by credit card
as part of the process. Call the PTO’s PCT Help Desk at
571-272-4300 if you have any questions.
b. PCT Fees
The PCT fees frequently vary due to exchange rate
fluctuations. They’re composed of several parts as follows:
• Transmittal Fee
• Search Fee: (a) if you haven’t already filed in the U.S.
(that is, you filed your first application in the PCT,
rather than the U.S.—very rare—see Section 6, below);
(b) if you’ve already filed in the U.S. (the usual case);
and (c) if you want to use the EPO as your searching
authority (recommended)
• International Filing Fee (country designation fees
are no longer required since all possible countries are
automatically designated).
A common course of action is to designate the EPO and
Japan with an EPO search. You should designate the EPO
as your searching authority if you intend to file there since
they generally do a better search than the USPTO and
you’ll save money and time in the EPO later. But be warned:
Sometimes the EPO does such a good search that you might
have to abandon both your U.S. and EPO applications.
If any foreign patent office cites a new reference against
your application, be sure to cite it in your U.S. application
by filing it with a supplemental IDS and PTO-1449. (See
Chapter 10, Section G.)
c. How to File PCT and Non-PCT
Convention Applications
To file a paper PCT application by mail, mail the Transmittal
Letter, Request (including the Fee Calculation
Sheet), a copy of your application and drawings (both on
A4 size), and CCPF or check, and a receipt postcard to:
Mail Stop PCT, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA 22313-1450, which, as mentioned, is a
designated receiving office for the International Bureau.
Like Convention applications, the international (PCT)
application should be filed within one year of your U.S.
filing date, also known as the priority date.
I advise filing the PCT application at least a month
before the anniversary of your U.S. filing date, so you’ll
have time to correct any serious deficiencies. But you can
mail the PCT application as late as the last day of the oneyear
period from your U.S. filing date if you use Express
Mail and complete the Express Mail Certification on page
1 of the Transmittal Letter. (Never use a plain Certificate
of Mailing (see Chapter 13, Section H) for any PCT
correspondence.)
To electronically file a PCT application using EFS-Web,
complete the Transmittal Letter online and save a PDF
copy. Complete the Request online, print it, sign it in Box
X, and convert it back to PDF by scanning. Prepare a copy
of your application and drawings and convert them to
PDF. Then, file online at the PTO’s EFS site (in the same
manner as instructed for your U.S. application in Chapter
10). You will get an instant acknowledgment and PCT Serial
Number.
To file any non-PCT Convention applications, use a
foreign patent agent in each country you select to prepare
an appropriate application. The easiest way to do this is
to send the agent a copy of your U.S. application and ask
what else is needed. The requirements vary from country
to country, but special drawings in each country’s format
will always be needed. You can have your foreign agent
prepare these, or you can have these prepared yourself at