The PCT Issues committee met at 4:30 PM on Thursday, October 18, at the annual meeting of the American Intellectual Property Law Association. This page summarizes the events of the meeting and provides the slide presentations for download. The meeting was standing-room only, with all chairs filled and people standing in the back of the room.

The Committee thanked Salvatore Sidoti for his past service as chair of the committee. Under his leadership the very successful PCT Road Shows took place in July of 2007 in Los Angeles, Houston, and Baltimore.

The new chair of the committee is Samson Helfgott, and the new vice-chair is Carl Oppedahl. Sam and Carl are among those who will be planning the PCT Road Shows for July of 2008. The present plan is that there will be two shows, one in Denver and one in New York. These will be July 10-11 and July 14-15, 2008. You should save the dates for these two road-show meetings.

Four excellent presentations were given at the meeting, and the meeting continued well past the scheduled ending time of 5:30 PM. The meeting wrapped up with questions and answers from the audience.

KIPO presentation. The Korean Intellectual Property Office has been available to US PCT filers since January 1, 2006, but even now there are many filers who are not aware of, or have not taken advantage of, the opportunity to choose ISA/KR as one's international searching authority. We are extremely fortunate that Mr. Gyuwan Choi of KIPO joined our meeting and gave a presentation on this new alternative of KIPO as one's ISA. Mr. Choi's presentation drew upon statistics from WIPO that show the timeliness of work by ISA/US (very poor), ISA/EP (often late), and ISA/KR (nearly always on time). He also noted the differences in fees ($232 per invention for ISA/KR, as compared with $1800 per invention for ISA/US or over $2000 per invention for ISA/EP). Finally he described the quality initiatives within KIPO that have been set up for this ISA work. The slides are available below.

The committee continues to be very interested to hear of the experiences of filers with ISA/KR. Filers with comments are invited to share them with Sam and Carl.

USPTO presentation. Mike Neas of USPTO described initiatives within USPTO regarding USPTO's obligations under the Treaty. As is well known, ISA/US is chronically extremely late in carrying out its duties. PCT search reports (and written opinions) are supposed to be completed and in the mail to customers with enough time to spare that the customer can take two months to decide whether to amend the claims (under Article 19), and send the claims to the International Bureau, and to have the amended claims (as well as the ISR/WO) published in the regular 18-month publication. But it is commonplace that ISA/US will fail to get the ISR/WO in the mail until after the 30-month date. When this happens, it is too late for the ISR/WO to be of any help to the customer who must make decisions where to enter the national/regional stage.

Mr. Neas described how USPTO is outsourcing the ISA/US work. Some outsourcing is to the Australian patent office, some to a first private contractor in the US, and some to a second private contractor in the US. On a test basis some outsourcing is also being sent to at least one other patent office. His slides are available below.

WIPO presentation. Matthew Bryan of the World Intellectual Property Organization described some recent developments in PCT. The long-awaited "supplementary search" now seems on track to be available starting in January of 2009. This would permit a PCT applicant to request a second, third etc. search from a searching authority other than the first one selected in the initial Request. There are many reasons why a filer might like to make such requests. As one example, given the wide range of different languages in recent years in which many patent applications are being filed around the world, a supplementary search might permit an applicant to get a lot more information than if only one searching authority were available for a particular PCT application. His slides are available below.

Presentation by the committee chair. Samson Helfgott, committee chair, gave a presentation on ways that PCT might be used strategically to minimize the harm caused to applicants by USPTO's new rules limiting continuations and imposing burdens on filers whose applications contain more than five independent claims or more than twenty-five total claims. His slides are also available below.

Also listed below are some of Sam's slides (which were not presented during the meeting) describing new PCT rules that took effect April 1, 2007. These include restoration of Paris Convention priority even if one has missed the 12-month due date, incorporation by reference, and rectification of obvious errors.

How to join the committee. If you have not already done so, we suggest that you join the Patent Cooperation Treaty Issues committee. To do this, simply go to the update committee selection page of the APILA web site. Log in to the web site (using your member ID and password) and then click the box to join. You can join as a "voting" member or as a "non-voting" member, and we welcome you for either type of membership.

Here are the slides.

• Samson Helfgott, Effect of new rules on PCT applications and strategic use of PCT (Microsoft PowerPoint, PDF)
• Gyuwan Choi, KIPO, New alternative International Searching Authority for your PCT application (Microsoft PowerPoint, PDF)
• Samson Helfgott, New rules on Patent Cooperation Treaty (Microsoft PowerPoint, PDF)
• Michael Neas, USPTO, Workload initiatives at the ISA/US (Microsoft PowerPoint, PDF)
• Matthew Bryan, WIPO, PCT Update (Microsoft PowerPoint, PDF)

Note: In case it may be of interest, Oppedahl Patent Law Firm LLC hosts a listserv for PCT filers. This list is a very active list in which all types of PCT questions are discussed. You can see instructions on how to subscribe to the listserv.