The Patent Cooperation Treaty

By: Joel Douglas, Eric Merenstein

The Patent Cooperation Treaty (PCT) is an international patent law treaty with over 150 contracting states. The PCT provides a procedure that enables at least one applicant to apply for patent protection for an invention in one or more of the contracting states on the basis of a single PCT patent application covering the invention (also referred to as an international patent application).

The PCT application can either be filed as a first patent application, or can claim priority to a patent application previously filed in another jurisdiction (e.g., a non-provisional patent application or a provisional patent application). An applicant generally has 12 months from the effective filing date of an earlier filed patent application to file a patent application (PCT or otherwise*) claiming priority to the earlier filed patent application.

James Cottone, [email protected]

On February 1, 2022 the United States Patent and Trademark Office announced the launching of their new Patent Public Search tool, a system designed to “provide more convenient, remote, and robust full-text searching of all U.S. patents and published patent applications.” The new system builds on the capabilities of their four existing search tools, namely the Public-Examiner’s Automated Search Tool (PubEAST), Public-Web-based Examiner’s Search Tool (PubWEST), Patent Full-Text Database (PatFT), and Published Patent Application Full-Text Database (AppFT). These four legacy search tools are scheduled to be retired in September 2022. 

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Ed Ryan, [email protected]

The Examiner interview is the cornerstone of effective patent prosecution. A short conversation can advance prosecution more effectively than reams of written response. You have the opportunity to cut past all of the bluster of the official record, to find out what the Examiner’s true motivations are for their rejections, and to avoid leaving a paper trail for future litigators.

The Claim Contingency: How If-Then Language Can Sink a Patent

Author: Edward Ryan

Conditional language seems like a natural choice for describing computer-based inventions. The if-then structure mimics computer logic, allowing an algorithm to be translated directly into the claims. But, thanks to a counter-intuitive and inconsistently applied principle of claim interpretation, using this language can result in claim elements being ignored entirely--both in prosecution and in litigation.

Roles of Patents in Innovation (Abridged)

Author: Dan Krueger

Let me begin by dividing the patent pool into three segments: (1) patents that you alone can use; (2) patents you can use but not exclude others from using (e.g., public domain or nonexclusive license); and (3) patents you can't use.

Ed Ryan, [email protected]

Gary R. Maze; Richard T. Redano

Bruce Young, [email protected]

There are many different decisions that must be made as a part of filing a PCT application. This blog article will outline some of the decisions that you will need to make in determining how to file a PCT application for your client, and discuss some of the options that may be available to you. Many of the issues raised here are too complex to completely cover in a blog article. Other resources, such as the PCT rules themselves (http://www.wipo.int/pct/en/texts/rules/), courses from the PCT Learning Center (http://pctlearningcenter.org/), and the PCT Applicant’s Guide (http://www.wipo.int/pct/en/appguide/index.jsp), as well as our very own NAPP member’s forum, can be helpful in determining answers to specific questions.

Avoiding a First-Action Final Office Action

Edward Ryan, [email protected]

There is a natural rhythm to patent prosecution, from non-final, to amendment, to final, to RCE, but that rhythm can be disrupted by an aggressive patent examiner. While the patent practitioner generally expects a new non-final Office Action after filing an RCE or continuing application, a first-action Final Office Action can sometimes result. This cuts off many of the applicant’s options for advancing prosecution and there are few events in patent prosecution that are more frustrating.

Are Patents Beneficial?

So, let's say you're at a family gathering and one of your acquaintances, upon finding out that you're a patent prosecutor, looks at you thoughtfully and says "Is it a good thing for ideas to be owned? Why is the government even in the business of granting monopolies?"