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Patent Cooperation Treaty (PCT) Practice Overview

This overview presentation discusses the Patent Cooperation Treaty (PCT) and provides some practical guidance about international patent prosecution using both the Paris Convention as well as the PCT process. It also provides a general overview of both the Paris Convention and PCT foreign filing processes from a US perspective and guidance as to PCT terminology and paperwork.

The presentation also gives an overview of the PCT prosecution processes including the Chapter I and Chapter II stages. A PCT pre-filing checklist is provided along with a flowchart showing the typical filing workflow, and both filing with the US Patent and Trademark Office (USPTO) Receiving Office (RO) and the International Bureau (IB) RO is discussed. Pros and cons of the various RO’s to use as well as the International Searching Authority (ISA) is described. The presentation includes practical guidance as to filling out the paperwork for the PCT application including the PCT request, sample declarations, transmittal, and fee calculation sheets. The presentation also discusses the PCT publication process, various timetables and deadlines and describes various techniques for amending the application, including changing applicant information by submitting substitute requests amending claims via Article 19 amendments, and the application via Article 34 amendments. In addition, the presentation discusses how to respond to Written Opinions (WO) and the best manner in which to proceed in a response. The presentation can be downloaded in sections here: PCT Overview, PCT How to File, PCT Search and Publication & PCT Amendment and Response Practice.