Advanced PCT Training 

Schwegman, Lundberg & Woessner, P.A. and Santa Clara High Tech Law Institute will host “Advanced PCT Training,” featuring Carol Bidwell and David Reed, US Consultants to WIPO on PCT matters with extensive PCT experience.  You can see the agenda (topics subject to change) of the seminar and bios of the speakers below.

There is no cost for the seminar or lunch.

We have applied for 6.0 CLE credits in California.

Register Now! 

PCT Seminar Agenda for Schwegman Lundberg Woessner
Santa Clara, CA
February 11, 2015

Topics (Provisional):

Overview of the PCT System

• Brief Review of the PCT system including the timeline and major phases
• Requirements for being accorded an international filing date
• Naming the applicant

Choosing a Receiving Office for US Applicants

• Requirements for filing in RO/US and RO/IB
• Pros and Cons of using RO/US and RO/IB
• Discussion of “applicant of convenience”

Choice of International Authorities for US Applicants

• Review of ISAs and IPEAs available
• Things to consider when choosing an ISA

Claiming Priority under the Paris Convention and Furnishing Priority Documents

• Discussion of Articles 2, 3 and 4 of the Paris Convention
• Possible legal consequences of EFS-Web filing in the USPTO
• Discussion of “restarting” the Paris Convention priority period
• Furnishing priority documents during the international phase
• Using WIPO’s Digital Access Service

Procedural safeguards

• Transmittal to RO/IB under PCT Rule 19.4
• Incorporation by reference
• Restoration of the right of priority
• Fee safeguards
• Preventing and postponing international publication
• Recording changes in applicant, inventor and agents
• Rectification of obvious mistakes

Internet Resources

• PCT resources available on the WIPO Internet site and new search tools
• Using the WIPO Internet site to view published international applications

Amendments under the PCT and Informal Comments

• Discussion of Article 19 amendments including where to submit, time limits for doing so and purpose
• Discussion of Article 34 amendments including where to submit, time limits for doing so and purpose
• Informal comments on the Written Opinion of the ISA

8 Recent and Upcoming Changes

• Review of 2013 changes to the PCT regulations
• July 2014 changes
• Information on ePCT

Strategies for Entering the National Phase

• Decisions that applicant must make
• Special requirements that may be made by Offices
• Reinstatements of rights when national phase time limits are missed

Entry into the US national phase and By-pass Continuation Practice in view of the America Invents Act

• Discussion of US national stage entry requirements
• Requesting early processing instead of waiting for 30 months
• New USPTO fee structure and a summary of national stage fees
• Inventor’s oath/declaration both pre-AIA and AIA
• How to make a domestic benefit claim in a national stage application
• Claiming priority to a foreign application
• Patent term adjustment for national stage applications
• Filing a by-pass continuation as an option
• Advantages and disadvantages of national stage entry and by-pass continuations
• Transition applications for first inventor to file provisions of AIA

PCT and the Patent Prosecution Highway (PPH)

• Information on Global PPH and IP5 PPH pilots
• Using the PCT work products to get onto the PPH
• Requirements for PCT-PPH in the USPTO

Where to get help

• Contact information for US consultants to WIPO
• Where to get help at the USPTO
• Contact information for WIPO staff

 

 

Speakers

Carol Bidwell
US Consultant to WIPO on PCT Matters
Tucson, AZ

Ms. Carol Bidwell became a consultant on PCT matters for the World Intellectual Property Organization (WIPO) in January 2006. Prior to accepting this position, she had been employed at the U. S. Patent and Trademark Office as a patent examiner in the Biotechnology Group, a special programs examiner in the PCT Special Programs Office and finally as the supervisor of the Office of PCT Legal Administration from March 1997 until she left the federal service in December 2005. Over the last twelve years, Ms. Bidwell lectured extensively on PCT practice and procedure to audiences throughout the U.S. as well as teaching PCT seminars in Canada and Mexico.

During her career at the USPTO, Ms. Bidwell was awarded a U.S. Department of Commerce Silver Medal for development of U.S. regulations and international standards for the submission of sequence listings in patent applications and a Department of Commerce Bronze Medal for developing and implementing the PCT International Search and Preliminary Examination Guidelines.

David Reed
US Consultant to WIPO on PCT Matters
Cincinnati, OH

T. David Reed, a retiree from Intellectual Property Division of The Procter & Gamble Company, is a consultant on international patent procurement and practice doing business under the name of TDR Patents. He is also a consultant for WIPO in the United States on matters relating to the Patent Cooperation Treaty.

For almost half of Mr. Reed's 40 years of service with The Procter & Gamble Company, he managed the international patent filing and prosecution area. David joined P&G in 1966 as a Product Development Engineer upon graduation from Northwestern University. Following a variety of assignments in Product Development, he was admitted to practice before the United States Patent & Trademark Office as a Patent Agent in 1988 and assumed his position in the Intellectual Property Division.

In 1990, Mr. Reed led the investigation of, and the decision to begin, a practice under the PCT. David managed the transition from a direct national patent filing practice, and helped build Procter & Gamble’s PCT practice into one of the largest in the world. Additionally he has had the pleasure of teaching and speaking around the globe for WIPO and others regarding the PCT and P&G's practice under the PCT as well as other issues relating to international patent practice.