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[wchild]

I've realized that it makes more sense for me to file to the WIPO given that I want to be covered abroad and it buys me time for filing to individual countries. Does anyone know of a good explanation of the format they require? I seem to be finding nothing but treaty information. Thanks.

[biopico]

FYI:

http://www.wipo.int/pct/en/index.html

[JimIvey]

Digging a little further in the link posted by biopico, you'll find the Applicant's guide.  Here's the blurb on the Description (Specification):
http://www.wipo.int/pct/guide/en/gdvol1/gdvol1-04.htm#P387_97417

Note the discussion of Rule 11.

Here's Rule 11 in its native form (easier to follow, IMHO):
http://www.wipo.int/pct/en/texts/rules/r11.htm#_11

One last point:  Why file in WIPO?  They want the claims in the Euro style of "characterized in that..."  If you have competence in a Receiving Office closer to home (e.g., the US), you can file there.  Lacking competence in a preferrable RO, filing in WIPO is the next best thing.

Regards.

[wchild]

Thanks for the links! Sorry for late response, was swamped with other work.

My reason for applying for WIPO is that I am basically seeking coverage in China, Taiwan, Japan, and possibly Korea. The U.S. protection does not do me much good, though I will apply there as well, I suppose.

the advantage I see is that I will be able to apply once to establish the disclosure, and then have 30 months to decide if I really want to go through the trouble in all the countries mentioned above. The alternative, as far as I understand, is to apply here. That gives me only 1 year to follow up in other countries. An expensive risk, with little time to find out whether they are worth the money of applying.

[wchild]

Jim,

What do you mean by "competence" in a receiving office?

[JimIvey]

What do you mean by "competence" in a receiving office?

I'm going to cheat by guessing off the top of my head, while the resources are probably right at the links I already posted.  Sorry, kinda busy today....

Not just anybody can file in any RO (receiving office) of the PCT.  At least one inventor or the applicant (i.e., assignee/owner) has to either be a resident or a citizen of the RO country.  So, if your client is a US corporation or has at least one US resident|citizen inventor, you can file in the US RO.

Suppose everybody is from somewhere else, e.g., Singapore.  The US RO is not "competent" (or the applicants/inventors are not competent -- I think it's the former).  So, the case can't be filed there.  If Singapore has a PCT RO, they can file there.  I say "they" because I assume you're registered in the US PTO and not in Singapore's patent office.  

Let's suppose Singapore doesn't have a PCT RO.  Then, they can file in the IB (International Bureau) in Geneva.  Can you represent them?  Probably not.  They can only be represented by someone authorized to represent them in at least one country that would be competent if that country had a receiving office.  So, suppose one of the inventors was a citizen of the UK.  A UK (or perhaps even an EPO) practitioner could represent them in the IB, or even in the EPO or UK RO.

So, that's what I mean by "competence".  The PCT really means "official authorization to represent others" -- not "knows what the heck they're doing."

As for not wanting protection in the US -- doesn't really matter.  You file in the PCT in the US RO and you have a pending PCT application that can be entered in the national phase to any designated PCT contracting state (country).  

Just don't expect your IPER before the 30 months.  IPE (Chapter II) in the US is absolutely useless and not functioning, except to defer fees (of the national phase) and to preserve choice (by postponing the national phase deadline in a number of countries).  The only way to get your Written Opinion in the US RO before the national phase (when it still might be reasonably useful) is to select EPO as your ISA and they'll include a draft WO with your ISR.  Of course, it's written by a searcher, not an examiner, so it's mostly useless.  But the US RO Officer usually just ratifies the thing as is -- no "heavy lifting" (as in a pencil) in the US RO.

I have no experience with Korea as the ISA -- have no idea if they produce a draft WO with the ISR.  I have no idea if they're any good.

Regards.

[wchild]

Hmm, this is getting complicated. Competence now clear, thank you.

So my application to the receiving office will most likely be in the US or else in Europe. Can it be done pro se? Or is that not advised in the case of PCT applications? You make it sound like the US RO is kind of useless as a testing case for the patent's viability. That complicates things.

[JimIvey]

You can always file in the IB -- it's always competent.  If you're representing yourself, then there's no question about whether your representative is "competent."

You can file pro se in the PCT -- I believe.  Lawyers (or agents) are never required, as far as I know -- in any area of the law (not just patents) and in every jurisdiction (not just the US).  They're almost always recommended, however.

I don't believe it's ever "advisable" to file pro se -- PCT or otherwise.  In fact, I'd go so far as to say that it's not advisable to use certain registered patent pracitioners -- it's just that not every practitioner is appropriate for every job.

Regards.

[Isaac]

Lawyers (or agents) are never required, as far as I know -- in any area of the law (not just patents) and in every jurisdiction (not just the US).  They're almost always recommended, however.

In Canada, unlike in the US, a company can be the applicant for inventions made by their employees.   In that situation, I believe the use of a practitioner is mandatory when prosecuting in Canada.  A Company cannot prosecute pro se.

I don't know if the law is similar elsewhere or even if the Canadian rule applies to PCT application.