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    Course Information

4170  Strategies for Employing Patent Cooperation Treaty Options


No cost or obligation  
Course Length    94  minutes
Course Price    $ 119.00

Volume discounts and subscriptions are available; for more information, contact Cognistar Sales.

    Accreditation Information


Click on jurisdiction below for more details.
>>  1.50  credits    CA  NY  PA
>>  1.75  credits    CO  WV

    About the Instructor(s)


  Carol Bidwell
U.S. Patent and Trademark Office

Carol Bidwell is the supervisor of the Office of PCT Legal Administration at the U.S. Patent and Trademark Office (USPTO). Previously, she served as supervisor of the PCT Special Programs division and as a special programs examiner in that division. Before joining the Office of PCT Legal Administration, she was a primary patent examiner in the biotechnology group. She was awarded the U.S. Department of Commerce Silver Medal for her work in the development of U.S. regulations and international standards for the submission of nucleotide and/or amino acid sequences in patent applications.

Ms. Bidwell lectures extensively on PCT practice and procedures. She has a B.S. in microbiology from Syracuse University and did graduate work in biochemistry at George Washington University. Prior to joining the USPTO, she worked as a clinical microbiologist.



  Samson Helfgott
Katten Muchin Zavis Rosenman

Samson Helfgott has practiced for more than 30 years in domestic and international patent, trademark and copyright matters, international patent strategy, and patent and trademark administration before foreign patent tribunals. He is a prolific writer and lecturer, who is frequently published in the area of international litigation pertaining to patents.

For many years, Mr. Helfgott was the coordinator of an annual program on Global Intellectual Property for the Practising Law Institute (PLI). He has lectured at all the major U.S. bar associations, including the ABA, AIPLA and IPO. He has also lectured in Europe, Japan and the Middle East.

Mr. Helfgott is a member of the American Bar Association (IPL Section) where he heads all of the international intellectual property matters, serving as international activities coordinator. He is chairman of the Harmonization Committee of the New York Patent, Trademark and Copyright Law Association (Board of Directors 1986-89). He is chairman of the Foreign Practice Committee of the Intellectual Property Owners Association. He has chaired many committees at the American Intellectual Property Law Association. He is currently the treasurer of the International Intellectual Property Society (President, 1994-96). He serves on the U.S. Bar, EPO Liaison Council, having previously been its chairman. He was the founder and first chairman of the U.S. Bar/JPO Liaison Council. He has represented the American Bar Association at international meetings and at international diplomatic conferences on world patent harmonization. He also is an advisory board member of and contributor to World Intellectual Property Report, BNA International, Inc., London, England.

In addition to the many articles he has published in professional journals, Mr. Helfgott writes a quarterly news article on international intellectual property matters for the American Bar Association’s IPL Newsletter. He is also coordinator of the international IP List Serve for the ABA.

After graduating from the City College of the City University of New York with a B.E.E. degree in 1961, Mr. Helfgott earned graduate degrees at Yeshiva University (M.H.L., 1962) and New York University (M.E.E., 1963). In 1972, he earned his law degree from Fordham University School of Law, and subsequently earned a doctoral degree (D.H.L.) from Yeshiva University in 1974.

Mr. Helfgott is admitted to practice before the U.S. Supreme Court, the U.S. Courts of Appeals for the Federal Circuit and for the Southern and Eastern Districts of New York, the Supreme Court of the State of New York, and the United States Patent and Trademark Office.



  John Hornickel
PolyOne Corporation

John Hornickel is intellectual property counsel for PolyOne Corporation, one of the world’s leading polymer service companies. He has practiced intellectual property law for more than 25 years and is a frequent speaker at CLE events on the Patent Cooperation Treaty and other patent and trademark matters. He has also spoken on behalf of the World Intellectual Property Organization on PCT matters in Switzerland, Mexico, Israel, South Africa and Singapore.

Prior to joining PolyOne, Mr. Hornickel was employed at Oldham & Oldham, Figgie International, 3M Company, and Bridgestone/Firestone.

Mr. Hornickel is vice-chair of the American Intellectual Property Law Association’s PCT Issues Committee and vice-chair of the University of Akron Law School’s Advisory Council to the Center for Intellectual Property Law. He is also a member of the U.S. Bar/EPO Liaison Council.

In the past, Mr. Hornickel has served on the Intellectual Property Owners Association board of directors and several IPO committees. He was also chair of AIPLA’s PCT Issues Committee, and represented the AIPLA at ad-hoc working groups on PCT legal matters at WIPO in Geneva. He is an emeritus member of the Association of Corporate Patent Counsels.

Mr. Hornickel is admitted to practice in Ohio, Virginia, Minnesota, and before the U.S. Patent and Trademark Organization (USPTO). He is a cum laude graduate of Davidson College, where he earned a degree in chemistry, and Wake Forest University School of Law.



  Louis Maassel
World Intellectual Property Organization

Louis Maassel has worked as a consultant to the PCT Legal Division of the World Intellectual Property Organization (WIPO) since 1991. He is available to give presentations and answer questions from applicants, attorneys and agents concerning the Patent Cooperation Treaty.

Prior to joining WIPO, Mr. Maassel served a long tenure at the U.S. Patent and Trademark Office (USPTO). He began as a patent examiner in 1957 and became editor of the Manual of Patent Examining Procedure in 1968. In addition, from 1970 to 1990, he assisted in the preparation of draft legislation involving changes to U.S. patent law and was involved in drafting the many proposed and final changes to the U.S. rules of practice in patent cases.

Mr. Maassel was also the advisor to the USPTO Committee on Enrollment, which is responsible for preparing and grading examinations for attorneys and agents to be registered to practice before the USPTO in patent cases. He served as primary expert on questions relating to U.S. patent procedure.

Representing the United States, Mr. Maassel took part in numerous PCT-related meetings at WIPO and in Tokyo between 1974 and 1990. He was chairman of the committee responsible for implementing PCT Chapters I and II in the USPTO. He also represented the U.S. at many meetings of the Committee of Experts on the Harmonization of Patent Laws at WIPO in Geneva, as well as in U.S. private circle meetings and the “Club of 15” meetings held in preparation for the WIPO meetings.

During his years at the USPTO, Mr. Maassel received bronze, silver and gold medals from the U.S. Department of Commerce. The gold medal is the highest award given by the department. It was awarded to Mr. Maassel for his role in implementing the Patent Cooperation Treaty in the United States.

Mr. Maasel is currently based in Bowie, Maryland.



  Chen Wang
E.I. du Pont de Nemours and Company

Chen Wang is senior counsel at E.I. du Pont de Nemours and Company, in Wilmington, Delaware. Her practice includes intellectual property counseling, worldwide patent procurement, freedom-to-operate analysis, intellectual property due diligence of target companies for acquisition or investment, and negotiation and preparation of supply agreements, technology development/research agreements, and joint venture formation and dissolution agreements. Ms. Wang is a past chair of DuPont’s International Patent Practice Committee.

Prior to joining DuPont, Ms. Wang was an associate at Brinks Hofer Gilson & Lione in Chicago. She traveled to China on behalf of the firm, where she participated in presentations on the importance of intellectual property.

Ms. Wang is incoming vice-chair of the International and Foreign Law Committee of the American Intellectual Property Law Association, and is a past chair of the AIPLA’s Patent Cooperation Treaty Issues Committee. She has written and given presentations on various international patent practice topics, including PCT practice and intellectual property enforcement in China.

After graduating with a B.S. in engineering from the University of Michigan College of Engineering in 1990, Ms. Wang earned her J.D. from Northwestern University School of Law in 1994. She is admitted to the Illinois bar.



    Outline + Synopsis

Outline Synopsis
Strategies for Employing Patent Cooperation Treaty Options
    I. Introduction
    II. Corporate View (Wang)
        A. Why PCT Reform Occurred
        B. What Are Your Needs?
        C. PCT Timeline
        D. Patent Term
        E. Who Files?
        F. Automatic Designation
        G. U.S. or EPO?
        H. Business Method and Telecommunication Cases
        I. Article 19 Amendment
        J. Publication
        K. Chapter I or Chapter II?
        L. If You Chose Chapter II
        M. Article 34 Amendment
        N. Time Extensions
        O. Inventive Step
        P. Article 19 Versus Article 34
        Q. Response to Article 34 Amendment
        R. Need U.S. Patent Fast?
        S. PCT Unknowns
        T. Docketing Questions
        U. Docketing Deadlines
        S. More on Article 34 Amendment
        T. Second Written Opinion
        U. Oral Interview
    III. Private Practioner’s View (Helfgott)
        A. Smaller Clients
        B. Client Interests and Concerns
        C. Classical Route vs. Cheapest Route
        D. PCT or U.S. Filing First?
        E. Search and Examination
        F. When to Choose Chapter II
        G. EISPE System Shortcomings
        H. Filing PCT Only
    IV. Questions and Answers
        A. Copies to Search Authority
        B. Chapter II Work Product
        C. Chap. II Interview Process
        D. Handling Timing Difficulties
        E. USPTO Docket Scheduling
        F. Juggling International and U.S. Applications
    AfterWordsSM
    How to Obtain a Certificate


On January 1, 2004, a number of changes went into effect regarding the rules and procedures for filing an international patent application under the Patent Cooperation Treaty (PCT). This program describes when to use Chapter I and when to use Chapter II, and how to make use of the new EISPE (Enhanced International Search and Preliminary Examination) system. The differences in approach for patent registration required by a large corporation versus a small company or an individual inventor are also covered.


    Content Provided By

 

The American Intellectual Property Law Association (AIPLA) is a 16,000-member, national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community. The AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright and unfair competition law, as well as other fields of law affecting intellectual property. Members represent both owners and users of intellectual property.

AIPLA was formed in 1897 in order to maintain a high standard of professional ethics, to aid in the improvements in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues.

To qualify for membership, applicants must be members in good standing of the bar of a court of record of the United States or any state. Foreign affiliate members must be able to practice in a court of general jurisdiction in their countries to be considered for membership, or be registered to practice with the Patent and/or Trademark Office of their country of citizenship. AIPLA also has student memberships available for those regularly enrolled in a law school approved by the Association of American Law Schools. Approximately 70% of the active members are in private practice, 30% in corporate practice, with the remainder in the government or academia.

AIPLA holds three regularly scheduled conferences a year, Mid-Winter, Spring and Fall, at which the association offers educational seminars on the latest developments in intellectual property law. In addition, AIPLA holds many stand-alone seminars on specialized areas of intellectual property law at varying times of the year in locations around the United States. The association also produces a number of informative publications including the AIPLA Quarterly Journal (a scholarly law journal published four times a year), the AIPLA Bulletin (an overview of AIPLA meetings published online three times a year), and CD-ROMs and tapes which include papers or speeches presented by speakers at the meetings. The AIPLA also publishes the Report of the Economic Survey biennially.

Furthermore, the AIPLA is actively involved in shaping U.S. intellectual property policy through its work on legislation and federal regulations affecting intellectual property cases in the U.S. courts. Internationally, the AIPLA has spearheaded a worldwide campaign to reduce the costs of procurement and enforcement of patents, regularly participates in meetings of the World Intellectual Property Organization, and maintains close relations with foreign IP officials and practitioners.




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4170  Strategies for Employing Patent Cooperation Treaty Options

Course Price     $ 119.00


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