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 PCT partial search bars 
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Joined: 2012-01-03 23:03:44
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Is anyone aware of any PCT countries that have a bar against allowing a national stage for parts of a PCT application which where not searched in the international phase? All I've been able to find so far is that additional national search fees are required for each invention in the PCT which was not searched by the ISA.


2012-03-17 16:43:27
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Joined: 2012-01-08 23:06:37
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fb2 wrote:
Is anyone aware of any PCT countries that have a bar against allowing a national stage for parts of a PCT application which where not searched in the international phase? All I've been able to find so far is that additional national search fees are required for each invention in the PCT which was not searched by the ISA.

I can't comment on the patent laws of every country. But for Canada, Japan, and EP you preserve the right to pursue the unsearched claims in the national or regional phase. In the EP though, you can pursue only the claims that were searched in the international phase in the EP parent. Unsearched claims must be pursued in a divisional. This is of consequence only if you no longer wish to pursue the searched claims: that is, you still need to file the parent for the searched claims (that you are no longer interested in) plus a divisional for the unsearched claims (that you are interested in).


2012-03-18 08:38:56
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This is not all bad, since the purpose of having extra unsearched inventions in the PCT is to "float" them until licensees can be found. This means that the cost of filing a PCT is the same with one or five inventions (except for extra "per page" fees). Of course, as is the case with the EP, the national filing cost goes up, but the licensee(s) is paying for that. And if there is no licensee(s), then there is no cost. The new lower cost option of using Rospatent for the ISA, however, may make it a bit more feasible for having all the inventions searched instead of just one.

I just needed to make sure that there was no unforeseen bar in some PCT countries that absolutely prohibited ISA-unsearched inventions (or claims) in the PCT from entering national or regional phase.


2012-03-18 12:12:30
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Joined: 2012-06-24 07:31:51
Posts: 33
Hi,

see here:

http://www.wipo.int/pct/en/texts/articles/a17.htm

Quote:
be considered withdrawn unless a special fee is paid by the applicant to the national Office of that State.


IMHO the "unless" says, they have to allow national stage if you pay that fee.
I do not know if they would be allowed to charge you a gadzillion for that.

So am I correct in saying that in principle you should be able to toss as many totally different inventions together into one PCT as you like?

Even if you would have to pay additional fees for thousands of excess pages, this would still be cheaper than filing each invention separately, as one additional transmittal plus filing fee costs as much as 99 pages while allowing only 26 pages to be filed without additional fees (taking into account 1 page abstract and 3 pages request).

Of course they will charge you search fees for every single invention, but that also would happen with seperate filings.

Say, you put ten totally individual inventions into one PCT, each of them having 40 pages (without request and abstract).
You will end up with $240 + $1344 + $5984 (10 times 40 pages minus 26 "free" pages times $16) + $4150 (10 times search fee) = $11718, which results in $1171 per invention.
If you file the inventions separately, the cost will be $2223 each.

If you choose to not have all inventiones searched for, the cost for 10 "shared" applications would only be $798.30.

Is there something I didn't consider?


2012-06-24 08:47:01
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Joined: 2012-01-03 23:03:44
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For PCT searching, I believe you only have to pay for the first search, not the remaining 9.


2012-06-25 13:35:06
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Hi,

that's what I meant with the $798,30 each.

But you might want to have at least some kind of search on all of the inventions in order to decide on going national.

Theoretically you could collect together 10 inventions from 10 different people and save a lot of money.
Of course you might have to name all of them inventors and sort that out once you go national. Could get tricky.


2012-06-25 17:06:52
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One inventor, 10 separate inventions. All about to be posted online. So the goal is to get a filing date for all 10, by just paying for one search; with Russia as the ISA, the total filing/search cost would be about 2200 USD, for an average of 220 each. Then if a licensee comes along and wants one of the inventions for his country, he can pay his national search and filing fee.


2012-06-26 11:45:51
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Hi,

i know that this is what you want to do.
You manage to get 10 inventions written on 40 pages? You will have to use a damn small font :-)


I thought about the possibility of some kind of class application, where multiple inventors "share" one PCT.

Of course that is not really intended by the WIPO, but IMHO there is no rule or article that prevents any of the many inventions from resulting in a granted patent.

Only thing one would have to take care of is filing the appropriate divisionals or CIPs. And you would need some contract that defines how this is to be dealt (like transfering rights of each divisional or CIP to the single inventors (or their licensees)).

Do you see any problems with such a class application that I seem to have missed?


2012-06-26 12:23:58
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Joined: 2012-01-03 23:03:44
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I forgot about the extra pages charges. But it's still better than an extra 9 X $415, or 9 X 1200, or 9 X 2200.


2012-06-26 15:01:28
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Joined: 2012-06-24 07:31:51
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Hi,

what font are you using?


2012-06-26 16:36:28
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Joined: 2012-01-03 23:03:44
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New Times Roman 12


2012-06-26 17:26:33
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Joined: 2012-06-24 07:31:51
Posts: 33
Hi,

as rule 11 only specifies the height of the capital letters, it might be an option to use a more condensed font like Tw Cen MT Condensed, which should be able to cut text size by 27%.

Also I think about using less than 1 1/2 line spacing. As this line spacing schould not be "necessary for the purpose of reasonably uniform international publication" as specified in rule 26.3 a i and rule 26.5, a line spacing of 1 1/4 might also be accepted.

If the receiving office decides to issue an invitation to correct the application according rule 11 one could still send a correction of the application.

Your thoughts?


2012-06-26 17:55:42
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Du you (or does anyone else) know, how Rospatent as ISA handles multiple dependent claims in a PCT application?


2012-09-05 12:37:03
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Joined: 2012-06-24 07:31:51
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Hi,

article 17, that i linked to before, is only applicable if the ISA invites for additional search fees because of non-unity of the invention.

How about having an application with more than one invention disclosed in the description but only one invention in the claims?

Is the ISA going to invite for additional fees if the claims refer to only one oft the disclosed inventions?

And if not, can you introduce that matter in the EP national phase (or just switch to that second invention completely) without the need for a divisional application?

IMHO you should be able to claim everything you disclosed in the description as long as there is unity and it does not belong to an invention you have not paid additional search fees after being invited for.

So whait if:
1. You disclose a green hause and a black plane, but you only claim the green house.
2. You get research report for green house and NO invitation to pay additional seach fee for the black plane.
3a. You enter netional phase and amend claims to only black plane
3b. You amend claims to black plane regarding article 19 and then enter national phase?

Any legal references to such a situation?


2012-09-09 12:03:43
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My counsel was telling me that some countries (like China, I think) are very strict on the PCT coming in exactly as-is with no changes.


2012-09-09 13:01:19
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Hi,

thanks for the answer!

That would kill 3a, with 3b still standing as article 19 would amend still being international.


2012-09-09 13:47:12
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Joined: 2012-01-03 23:03:44
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Also my understanding that claims pretty much have to already be in place in the PCT; can't add them later.


2012-09-09 16:09:48
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Joined: 2012-06-24 07:31:51
Posts: 33
Hi,

it seems that claims can be added, either in the international phase (article 34) or in the national phases (at lest with the EP), as long as their matter is disclosed in the application as filed AND it belongs to the invention(s) that have been searched for by the ISA.
So there must not be any added claims for unsearched inventions.


2012-09-10 14:57:11
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