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One of our most successful presentations on business trips to Asia in recent years was the one about “Dos and Don’ts in European Filings” covering many practical hints that should be observed – possibly already at the drafting stage – upon filing direct EP applications with the EPO or entering the EP regional phase via the PCT route.

At KSNH we are very happy to announce that an article by my colleagues Jochen Höhfeld and Shino Tanaka summarising this lecture has been recently accepted for publication by major IP journals in Japan, China, and Korea:

Japanese:

JPAA Journal “Patent”, Vol.66, No.4, 2013.3, pp. 14-19

Chinese:

China IP News, 2013-05-31, issue 1427, p. 8 (part 1)

China IP News, 2013-06-07, issue 1429, p. 8 (part 2)

Korean:

KPAA Association Journal, May 20, 2013, pages 6, 7

(see also here, No. 162  제810호, 2013.05.20)

 

Basically, the articles cover the following topics:

Claim Drafting

  • Limitation of number of claims
  • One independent claim per category
  • Unity of the invention
  • Reference numnerals
  • Multiple independent claims
  • Functional claim features
  • Clarity of the claim language
  • Claims in two-part-form (Jepson-type claims)
  • Claim amendments
Drafting the specification:
  • Number of pages
  • Basis for claim amendments
  • Discussion of prior art
  • Abstract
  • Incorporation by reference

Organisational issues:

  • Format of pages
  • Entering the regional phase before the EPO (Euro-PCT)
  • Regional pahse entry with the EPO acting as International Search Authority
  • Designation of the inventor
  • Divisional applications before the EPO
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According to Chapter II PCT (International Preliminary Examination) the International Preliminary Examination Authority (IPEA) draws up the International Preliminary Examination Report (IPER) which is forwarded to the elected national patent Offices upon national phase entry. Since most national Offices use the IPER as a basis for their substantive examination, it is vital for the applicant that a positive IPER is established.

Based on Rule 66.4 PCT, reading

Additional Opportunity for Submitting Amendments or Arguments:

(a)  If the International Preliminary Examining Authority wishes to issue one or more additional written opinions, it may do so, and Rules 66.2 and 66.3 shall apply.

(b)  On the request of the applicant, the International Preliminary Examining Authority may give him one or more additional opportunities to submit amendments or arguments.

the EPO now announced an important procedural change for international applications entering Chapter II PCT before the EPO functioning as IPEA (see Notice from the EPO dated 31 August 2011).  According to that revised practice, the EPO obtains discretion to issue additional written opinions before establishing the IPER, either on its own initiative or upon applicant’s request. This will give applicants more control and influence and better chances to enter the national phase with a positive IPER.

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