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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Tuesday, November 30, 2021

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide patent practitioners through the Patent Cooperation Treaty (PCT) and its amendment process. The panel will discuss amending claims, specifications, and drawings, as well as correcting errors and defects in the application. The panel will also discuss how to use the PCT to obtain international patent protection strategically.

Faculty

Rebecca M. McNeill
Partner
MCNEILL, PLLC

Ms. McNeill offers intellectual property strategy and advises on new application preparation, patent prosecution (U.S. and foreign), and preparation and negotiation of IP transactions, and provides the full scope of counseling services. She has a special interest in counseling clients on patent application filing and developing worldwide prosecution strategies in concert with clients’ business goals. She has managed and directed the U.S. and international patent portfolios for U.S. clients and has overseen the U.S. patent portfolio for international clients in Europe and Asia.

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Jens Viktor Nørgaard
Partner, Head of Biotechnology & Plant Sciences
HØIBERG

Mr. Nørgaard counsels on all areas of life science and medical technology including anything from genetics and molecular biology to drugs, diagnostics, analytical equipment, medical equipment, and greentech. He counsels on IPR strategy, IPR organization and management of companies, business development, license agreements, freedom-to-operate, validity of patents, oppositions and appeals before the EPO (European Patent Office), in addition to drafting and prosecution of patent applications. He also serves as a technical judge in Norway. Since 2015 he has served as Chairman of the Board at HØIBERG.

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Description

When seeking patent protection, counsel often seek patent protection outside the U.S. using the Patent Cooperation Treaty (PCT)--the heart of the international patent system. While the PCT is a cost-effective option and provides many benefits, it has proven to be an intricate system.

After receiving a PCT application, an International Searching Authority (ISA) will conduct an international prior art search. The results are returned to the applicant and published in an international search report and written opinion on the potential patentability. Under Article 19, the applicant can revise only the claims in the application. However, Article 19 amendments must be filed within two months of the report. The ISA will not conduct a further substantive examination.

If there are obvious errors in the application, applicants can request rectification under Rule 91, but they must show that the error and the correction are obvious. The second step is often more challenging to demonstrate. Further, determining to which authority the request is made is dependent on where the error is in the application. Counsel must note some exclusions under the rule, including if the rectification would change the priority date.

Counsel needs to understand the PCT filing, amendment, and rectification process. Timing is critical as it could alleviate the need to file numerous preliminary amendments in each national stage application, among other things.

Listen as our authoritative panel of patent attorneys reviews the PCT application process and examines the requirements, procedures, and timing for amending claims as well as specifications and drawings. The panel will offer best practices for strategically using the PCT to maximize international patent protection.

Outline

  1. PCT application process
  2. Amending claims
  3. Amending specifications and drawings
  4. Correcting errors and defects
  5. Strategically using the PCT to maximize patent protection

Benefits

The panel will review these and other key issues:

  • What are the benefits of and reasons to use the PCT?
  • What are the challenges when seeking to amend the claims of the PCT application? The drawings? The specifications?
  • What are the limitations when seeking to correct errors, cure defects, or rectify apparent mistakes in the PCT application?