Patent It Yourself - PDF Archive

332 | Patent it YOURSELF
30-month deadline to give them (and you) time to prepare
the applications and translations, if necessary.
Patent Prosecution Highway—Expedited
Examination of Applications Filed Abroad
As stated in Chapter 10, you get your application
examined ahead of turn in almost all major foreign
patent offices if you first filed your application in the U.S.
and then filed a foreign application claiming priority of
your earlier-filed U.S. application. In order to enter this
program in the foreign patent office, the USPTO must
have officially allowed at least one claim in the first-filed
U.S. application. If you want to enter this program you
must have your foreign agent file a request in the foreign
patent office.
Beware of Scams
Unfortunately the scammers have even invaded the
world of the PCT and foreign patent filings. Once
your application is published, you may get offers from
scammers seeking to lighten your wallet. E.g., after
filing a PCT application for a client and revoking the
Nonpublication Request that I had originally filed, the
PTO published his application about 18 months after
filing. Shortly thereafter He got a letter from a “Patent
Registry” in Washington, DC, offering to register his
patent in their private “American Patent and Trademark
Register” for only $2,489.46! I did not see any commercial
value whatsoever to this offer.
L. Rescind Any Nonpublication Request
When you filed your U.S. application, you had the
opportunity to file a Nonpublication Request (NPR) (see
Form 10-7). If you filed an NPR, you must file a rescission
of this Request with the PTO within 45 days of filing your
foreign application. You must file the rescission regardless
of whether you are filing directly in a foreign country or
using a PCT application. If you do not file the rescission, the
PTO will strike your U.S. application.
To make the rescission, complete and file Form PTO/
SB/36, available on the PTO’s website. If you don’t have
Internet access, you can use Form 13-1, but title it “Request
to Rescind Previous Nonpublication Request.” Remove
the sentence stating “In response to Office Letter …” and
substitute the following statement: “Applicant has foreign
filed the above application on or about [date] and therefore
hereby rescinds the previously filed Nonpublication Request
under 35 USC 122(b).” Remember to complete or include
a Certificate of Mailing at the end of the rescission as in
Form 13-2. (If you forget to rescind the NPR within 45
days of your foreign filing your application is technically
abandoned but you may revive it by a petition under Rule
136(6), accompanied by a stiff fee.)
After notification, the PTO will schedule publication of
your application 18 months after your U.S. filing date (or as
soon as possible after the 18-month period). You will have
to pay a fee for publication when you pay your issue fee.
M. Resources to Assist in Foreign Filing
There are a number of resources to assist you in foreign
filing your patent application. Let’s look at them separately.
1. U.S. Patent Practitioners
Most U.S. patent attorneys and agents have experience in
foreign filing and will handle the PCT filing and national
stage filings for you for a fee, in addition to the filing fees.
2. Foreign Filing Firm
One firm specializes in foreign patent filing. Visit www.
Inovia.com.
3. Foreign Patent Agents
As I’ve mentioned, if you desire to file abroad in the
national stage you’ll almost certainly need to find a foreign
patent agent who’s familiar with patent prosecution
in the countries where you desire protection. (In most
countries, patent professionals are called “agents” rather
than attorneys. As in the U.S., patent agents are licensed
to represent clients before their patent office, but not their
courts.) Your best bet is to find one through a U.S. patent
attorney (see Chapter 6, Section E), as most are associated
with one or more patent agents in other major countries.
If you don’t know a U.S. patent attorney or someone
who’s familiar with foreign patent agents, there are several
other ways to obtain the names.