Patent It Yourself - PDF Archive

330 | Patent it YOURSELF
lesser cost by the same companies that make drawings for
U.S. divisional applications. (See discussion of “Divisional
Applications” in Chapter 14, Section D.) Also, the agent
will send you a power of attorney form that you’ll have to
sign. Also you’ll generally need a certified copy of your
U.S. application; this can be obtained from the PTO. (See
Appendix 4, Fee Schedule.) The cost for filing a foreign
application in each individual country is about $1,000
to $5,000, depending on the country, the length of your
application, and whether a translation is required.
If you wish to correspond directly with the foreign patent
agents yourself, you’ll first have to get the name of a patent
agent in each country. See Section M, below.
d. What Happens to Your International Application?
You’ll receive a (PCT) filing receipt and separate serial
number for your international application, and the application
will eventually be transmitted for filing to the countries
(including the EPO) you’ve designated on your request
form. If you make any minor errors in your PCT application,
the PCT Department of the USPTO will give you a
month to correct them.
e. Search Report
When you receive your PCT search report (either from
the PTO or EPO and usually after several months), it
will include a written opinion on patentability. You can
comment on it and amend your claims if necessary, but no
extended prosecution or negotiation is permitted. If you
enter Chapter II of the PCT (optional), you will receive a
more formal examination of your application, but it will be
similar to the written opinion on patentability of Chapter
I. The WIPO will publish your PCT application 18 months
from your priority date. Your priority date is the date you
filed a PPA or an RPA if you didn’t file a PPA.
CAUTION
If the search report cites any new references, be
sure to cite these to the PTO by way of a supplemental IDS; see
Chapter 10, Section G, and Chapter 13, Section A4.
f. National Stage
Within 30 months from your U.S. filing date, whether or
not you elect Chapter II, you must hire an agent in Europe
(get one in London, if you are seeking one who is fluent in
English, or Munich, if seeking an agent close to the EPO
offices) and file an EPO application based on your PCT
application. Also, you must have an agent in each non-EPO
PCT country (such as Japan or Australia) in which you
wish to file and get national applications on file in these
countries. Expect to pay very stiff fees to file and a high
maintenance fee each year that the EPO application is
pending.
As mentioned, each of the separate countries and
the EPO will rely to a great extent on the international
examination they’ll receive from the International Bureau.
(In most cases this will be the EPO search or an adoption of
the U.S. search.) Thus, one advantage of the PCT approach
is that you’ll save much of what used to be the agonizing,
extremely expensive job of separately and fully prosecuting
an application in each country in which you elected to file.
CAUTION
You will not receive a reminder to enter the
national stage by 30 months from your priority (U.S. filing)
date. You are solely responsible for getting your national stage
applications on file by the 30-month deadline. I suggest that
you select a date two months ahead of the 30-month deadline
and write this on your calendar and on each paper you receive
from the PCT.
2. Route B: Elect Chapter II of PCT If You
Want an International Examination
Route B is the same as Route A, except that instead you
elect Chapter II of the PCT before filing your national
applications. You have, as indicated, 22 months from your
U.S. filing date or three months from the transmittal of the
search report, to do this.
Get the forms (PCT/IPEA/401) from the PTO’s site or
the PCT department of the PTO, and also get the latest fees
for Chapter II. If you select the EPO to do the examination,
you must file the papers with the EPO in Munich (address
in Section D, above) and pay the fee in Euros. You’ll get an
examination report where claims will actually be allowed
or rejected. You can amend your application once and even
interview your examiner.
You file your EPO and non-EPO applications in the same
way you did under Route A—that is, you elect agents, send
them copies of all of your papers, and tell them you want
to file national applications in their countries based upon
your U.S. and PCT applications. Route B will cost more
than Route A since you incur the expense of Chapter II of
the PCT.