Patent Cooperation Treaty: Amending International Applications, Curing Defects, Rectifying Obvious Mistakes, Errors

Description

When seeking patent protection, counsel often seek patent protection outside the U.S. using the Patent Cooperation Treaty (PCT)--the heart of the international patent system. While the PCT is a cost-effective option and provides many benefits, it has proven to be an intricate system.

After receiving a PCT application, an International Searching Authority (ISA) will conduct an international prior art search. The results are returned to the applicant and published in an international search report and written opinion on the potential patentability. Under Article 19, the applicant can revise only the claims in the application. However, Article 19 amendments must be filed within two months of the report. The ISA will not conduct a further substantive examination.

If there are obvious errors in the application, applicants can request rectification under Rule 91, but they must show that the error and the correction are obvious. The second step is often more challenging to demonstrate. Further, determining to which authority the request is made is dependent on where the error is in the application. Counsel must note some exclusions under the rule, including if the rectification would change the priority date.

Counsel needs to understand the PCT filing, amendment, and rectification process. Timing is critical as it could alleviate the need to file numerous preliminary amendments in each national stage application, among other things.

Listen as our authoritative panel of patent attorneys reviews the PCT application process and examines the requirements, procedures, and timing for amending claims as well as specifications and drawings. The panel will offer best practices for strategically using the PCT to maximize international patent protection.