Please make your prepayment to cover the full amount indicated above ASAP to get us started on this work at least 2-3 weeks (2 weeks for a simple Demand and 3-4 weeks for a Demand w/ arguments) before the 3 month deadline (the three months being measured from the search report mailing).  If we have less than above request time to make the demand, we will work on a "best efforts" basis.  If the deadline is past you may lose the right to demand the Chapter II preliminary examination in the PCT process.

In addition to procuring this PCT Search Opinion Action Response work, you need to also procure our Preliminary Examination Demand preparation and filing legal service, and pay the Preliminary Examination Demand official fees.

As explained in more detail below, the hope in filing preliminary amendments/arguments with the demand request is that it will sway the Examiner before he/she forms an opinion possibly in line with a (partially) negative search report opinion.  The preliminary examination report usually is received a few months after filing the demand, and will give you an option to respond (esp., if not favorable) or to stay silent until you file foreign patent(s) in the national stage.  We'll give you more info on all this when the report arrives, assuming you make the demand. Entering Chapter II has the main benefit of providing an opportunity for a Preliminary International Examination and Response. We therefore recommend that you enter Chapter II to obtain these benefits.

Please let us know no later than two weeks before 19 months deadline or within 3 months of the if you would like us to file a Demand on your behalf.  

Please keep in mind that the Examiner will almost always have you narrow the claims far more than you could (budget permitting) get by negotiate back and forth a few iterations. When budget is limited, you should always indicate to us that we should narrow the claims as much as possible to help assure allowance as opposed to our fighting for the broadest claim scope/strength.  If you instruct us to narrow your claims, we will take this to mean that you want to narrow to the maxim towards achieving a next office action allowance.  Keep in mind that, generally, more conservative narrowing tends to increase prosecution cost and time, and the more aggressive the narrowing the lower the future cost. So, please make clear if you are requesting maximum narrowing or not.

Also, it is important that you understand that "rejections" are not actual rejections per se.  We almost always make legal arguments and claim language negotiations that overcome the "rejections".  That is where the different service level options come into play.  The higher levels afford more sophisticated arguments that have a better chance of winning and preserving your patent scope and strength, and the lower level is less so. 

Among other things, the "more comprehensive" level includes the possible drafting of new claims to improve original one(s) and multiple amendment/argument strategies.  The more comprehensive approach will usually have two or more lines of (usually more sophisticated) arguments and/or amendments to overcome the rejection.  The "more comprehensive" level may also reduce future prosecution costs when at least one the multiple amendment/argument strategies is liked and accepted by the Examiner thereby avoiding more rejections and the associated costs to continue prosecution and responses. For the “Basic” level service, the effort is focused on narrowing the claims as (expected to be) needed to get a next office action allowance.  Under current law, you lose patent protection on anything similar to what was given up by the claim narrowing.  Thus, if patent strength and scope is more important than other factors such as speed and cost, then you should avoid the “Barebones” level.  The “Barebones” approach will usually just accept any allowed claims and maybe include minimal (usually extremely simple) single line argument(s) and/or amendment(s) to overcome the rejection only for a subset of claim(s) and the lead reference focusing on maximally narrowing claims to get allowance.  Generally, no effort is made in the "basic level" to draft new or broadened claims or make multiple amendment/argument strategies typically required to keep or achieve maximum patent protection scope and strength.  If the Examiner does not accept the simple narrowing approach, then prosecution will need to be continued and further office action responses prepared and filed.  The "Good" level strikes a cost effective balance between the "more comprehensive" and “Basic” levels.

It may be helpful to know that often the Examiner thinks the cited prior art is so strong that he/she needs a lot of detailed convincing to believe otherwise.  That is, in such cases the Examiner is more committed to believing the cited reference(s) is/are strong and it takes a lot of effort to get him/her to change their general opinion and admit that they are completely wrong.  They don't like to admit that easily.  So the basic approach runs the risk that the surgical amendments and arguments done at that level don't exactly hit the Examiner's "gut feeling" about lack of novelty, and he'll just restate his position in other terms and make the rejection final requiring another round.  It may work just fine, but when budget is available, we usually prefer to hit each reference with a sledge hammer instead of try to kill the fly with a finger.  Also, because the basic level seeks to narrow the claims more than enough than what may have otherwise been needed if a more sophisticated approach was taken; whereas, the "more comprehensive" level additionally tries more conservative approaches towards preserving more patent scope by focusing more on clever arguments and case law citations.

If the PCT Office is not persuaded by our legal response, usually they will not consider further negotiations in your case.  Hence, the "more comprehensive" approach is always suggested when budget permits. When you have significant financial interest in patent scope and strength, then you should select the "Top/more comprehensive" or "top attention" level.  When budget is a constraint, and it is more important to just get a patent on at least (usually a very narrow) a portion of your claim scope, then the basic level is best.

Also, please be aware that any new claims you have in mind may be added to your application in our response.  If you have claims that you felt are fully described and supported by the original specification, but were not originally fully claimed, please prove provide us a list of all new claims (in plain English) that you want to add so that we can give you a quote for adding them.  Please note that new claims (of things already disclosed in your patent specification) are allowed, but the PCT Office does not allow any new matter (i.e., content never disclosed originally) to be added or claimed.  Also, the Foreign Patent Offices will usually charge you a very high fee per new claim you add.  Any new claims you may want require separate quoting, so are not included in the above quote unless you submitted the new claims as part of the request and basis for the above quote.

Note that because your PCT search report was recently mailed, technically, your demand is not due until within 3 months from the mailing date of the search report (see Rule 54bis below my signature).  Please also note that if you want to have us amend your PCT application claims under Article 19, Rule 46, they must receive it within 2 months from the mailing date of the search report.  Accordingly, please take prompt action to file your demand or foreign patent filings as described in more detail below.  However, if you do the demand timely, we can make Article 34 amendments and arguments in that process.  I can send you a quote for this upon your request, in a separate email.

IDS Filing to USPTO 

As described in more detail in a notice below, if you have a US non-provisional Patent filing you must cite all the prior art in your PCT search report to the USPTO in an IDS form within 2 months of the search report being mailed.  To have us handle this for you please ASAP make your payment, order it on our website with your instructions to properly engage us for this (or any other) work.  If we do not receive such prepayment we will assume that you will be submitting the prior art to the USPTO yourself.  We generally require at least a 2 week turn time, but may be longer (e.g., 4 weeks) depending on how busy we are.

NOTICE IF YOU HAVE ALREADY FILED A US PATENT APPLICATION RELATED TO THIS PCT CASE- BY US LAW YOU MUST DO THE FOLLOWING OR RISK YOUR FUTURE US PATENT BECOMING INVALID: If you have related (in any way) US or foreign or international (e.g., a PCT) patent application prosecution which has discovered prior-art (e.g., in the attached search report or foreign patent office action) not already cited to the USPTO, then the USPTO requires that it must be submitted ASAP in an Information Disclosure Statement (IDS) within 3 months of receiving (or first becoming aware of) it.  If so, please provide us with a list of all known prior-art to cite for filing under the IDS procedure.  Generally, the USPTO requires the filing of an Information Disclosure Statement (IDS) with copies of all relevant publications (patents or otherwise) known to the inventor. The IDS is usually filed before receiving the official filing receipt from the USPTO, about three months after filing the application.  BAIP charges an IDS preparation/filing fee, and there might be additional fees from document suppliers, if you cannot supply a copy of a reference and your practitioner need to procure it elsewhere.  It is usually recommended that you provide your practitioner with copies of all publications you know about before they file your application (ideally, before the first draft is prepared). However, if you become aware of any references which are relevant to patentability during the pendency of the patent a Supplemental IDS should immediately be filed disclosing the references; for example, in a related US patent application or a foreign patent office cites patents against a foreign counterpart of the US application.  Likewise, the USPTO also requires the disclosure to them within 2 months of any US patent application you have filed that is related to this case in any way; otherwise you risk your future patent becoming being rendered invalid by presumed inequitable conduct.

As described in the notice below, there are a few critical deadlines in the PCT process to meet or you will loses your foreign patent rights.  The main deadline is the 30 month deadline to file foreign national patents under the National Stage of the PCT process.  Generally, you must file national patent applications (i.e., the "National Phase") in each foreign country that you elect within 30 months of your priority date.

You can calculate all your PCT deadlines (described in some detail below) using this calculator (the "Earliest Priority Date" is the earliest filing date of either your PPA, Utility, or PCT indicated in your PCT filing receipt):

https://pct.wipo.int/ePCTExternal/pages/PctTimeline.xhtml

Take note of the various tabs in the above PCT deadlines calculator; especially, the one for the “Demand” timing.

Also, read the following informative page on PCT required procedures and deadlines:

http://www.wipo.int/pct/en/texts/time_limits.html

Please mark your calendar accordingly. You should not rely on any further courtesy reminders to come from us and you should mark your calendar accordingly to take appropriate action at least 3 months before any deadline. 

30 month NOTICE: For entering National Phase, we offer very competitive rates through our comprehensive foreign associate network, covering practically every country in the world.  For quotes, please reply to this email with a list of the countries you are interested in entering. You should take action or at least begin prospecting for foreign patent agents as soon as you can, and engage in filing the national applications at least 3 months prior to the 30 month deadline.

If we do not receive your prepayment and instruction by at least 3 weeks prior to the filing deadline, we will assume you do not wish to file the Demand.  Rush fees will be due if we have less than 2 weeks to file without remarks, and 3 weeks if you desire remarks or amendments..

How to Engage our Services

1)     Configure the above linked shopping cart options (if any) according to what best fits your situation, goals, and/or budget.   (you may always edit your cart to make any changes- see below for details)

a)     The service item may have a text entry field named "Please provide any Special Instructions...", where you should enter any specific guidance or information that may be helpful for us to properly process your order (e.g., any case number we've assigned in the subject line above, deadline situations, how this order relates to any other orders, etc.)

b)     The service item configuration total price will be reflected in the "Selected Combination Total" line item below any options menus.  Likewise, the "Service ID" will be updated to encode your configuration selections.

2)     Click the "select service" button to put the service item you configured into your shopping cart. You will notice shopping cart at the top right of the page, which indicates how many items it currently contains. Click that shopping cart icon anytime you want to see what items are in your shopping cart, and you'll notice a pencil icon on each item which enables you to go back and edit the item, and save your edits by again clicking the "select service" button.

3)     Click the "Checkout" button to begin the checkout process.  On the Checkout page, enter your email address, client status, and PoC information for the legal service you are ordering. Then click the “next intake page” button to proceed to the payment indication page.

4)     Make your payment off-line (i.e., not through our website) using one of the methods specified in the below postscript of this quoting email. Currently, online payment methods through our website are not implemented yet.

5)     After you made your payment off-line, return to the above payment page on our website where you will specify how much you paid, by what means, and some kind of transaction receipt/info for us to research and match it up to your order to approve it.

a)     NOTE: Most of our services require 100% prepayment of the quoted fee; however, if our emailed written quote indicates a lesser prepayment amount then instead of our standard full prepayment policy for reduced fixed-fee work, you can take advantage of a reduced minimum down payment fee (e.g., 50% of the quoted fixed-fee, plus any rush fee quoted) to start patent work on each case. The remaining fees are later due at least upon our completing the 1st draft of the ordered legal service for your review/revision and/or our filing.

b)     If you paid using methods like PayPal/Zelle/check/money order/bank wire/bank deposit/ etc., then during the above linked checkout process select the "off-line" payment option, which will ask you for which "off-line" payment means you use and a copy of the transaction information so that we may manually confirm and process it to credit it to your account.

6)     After you register your payment per the above, our system will guide you to our online new case intake forms to gather your administrative information for this new patent case (e.g., POC, contacts, inventors, assignees, work request details, service agreement, etc.).

7)     You will be emailed a link to proceed to our secure client portal dashboard to securely submit your materials, documents and instructions for our legal work.

8)     Our team reviews all your submissions and works with you to validate/improve anything needed for us to properly do our legal work.

http://www.patenttrademarkblog.com/pct-deadlines-for-chapter-ii-demand-and-article-19-and-34-amendments/

PCT Timeline

Here’s an exemplary timeline of the PCT process:

As a reminder- IMPORTANT NOTICE:

Your above identified application is currently being prosecuted under Chapter I of the PCT.  Under Chapter I, you must enter the National Phase (i.e. have patent applications on file in your designated countries) within 19 months in most countries from the priority date of the U.S. application. For entering National Phase, you will need to retain another firm with a foreign associate network.

Alternatively, you can elect to enter Chapter II of the PCT by filing a “Chapter II Demand” prior to 19 months after the priority date of the U.S. application.  In this approach you need to file a "Demand for preliminary Examination" the later of within 3 months from receiving the search report or within 22 months in most countries, and 19 months in a few, from the priority date of the U.S. application and then enter the National Phase (i.e. have patent applications on file in your designated countries) within 30 months in most countries, and 19 months in a few, from the priority date of the U.S. application.  

·         (a) A demand may be made at any time prior to the expiration of whichever of the following periods expires later:

o    (i) three months from the date of transmittal to the applicant of the international search report or the declaration referred to in Article 17(2)(a) , and of the written opinion established under Rule 43bis.1 ; or

o    (ii) 22 months from the priority date.

·         (b) Any demand made after the expiration of the time limit applicable under paragraph (a) shall be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare.

PLEASE NOTE THAT NOT ALL COUNTRIES ABIDE BY THE ABOVE Chapter I/II deadlines, and you should continually verify the deadlines, which may change at any time, for your countries of interest.  Here is the list of country codes:
http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf

We would like to have at least one month’s notice if you wish to have us file a demand, i.e. please let us know no later than 18 months of the priority date.

The cost to prep/file a simple demand (no arguments made now, but can be made later) is our fee to prep/file the Demand plus the PCT official fees.  See the current PCT Demand official fees here (depending on your entity status and who was the ISA):

https://www.uspto.gov/patents-getting-started/international-protection/patent-cooperation-treaty/pct-fees-us-dollars

e.g., if you are micro entity and US was the ISA, your fee would be the sum of the “HANDLING FEE” Fee Code 1705 and the “PRELIMINARY EXAMINATION FEE / USPTO was ISA in PCT Chapter I “ at the micro level, which was ~$355 in 2018.

Be sure to read the page titled "Annex to Form PCT/1B/301", "Information of Time Limits for Entering National Phase". 

Again, as a reminder:

For the PCT application, you must make a "demand for Examination" within 22 months from the priority date (to be safe, do it before 19 months).  And you must provide designated each Foreign Patent Office to file a national patent in and pay the national fees not later than at the expiration of 30 months from the priority date. Please see the below postscript for some relevant PCT laws on this (esp. Articles 22 and 31), and the attached PCT process images and articles (valid as of Mid-2004) for more clarification.  Also, you should allow at least 3 months prior to any deadline date to take action.  We do not, at this time, support national stage filings, but we can refer you to a well know firm that does.

For your information, upon filing the demand, the PCT performs a non-binding examination based on a PCT search report, which are both forwarded to the designated national offices.  The demand is a procedural requirement to entering the PCT Chapter II, and thereby further defer foreign national filings to 30 months. Regarding the demand, after receiving the PCT search report you will have the option of amending the claims before or in response to PCT preliminary examination. If you seek to defer costs, you will usually want to amend the claims later either in response to the non-binding preliminary examination results or at the national filing stage. In general, because the preliminary examination is non-binding no claim amendment is required until you get an office action from the foreign national patent office(s) you end up filing in. That is, any amendments that you are allowed to do in the PCT preliminary examination stage, may be deferred to the foreign national patent prosecution stage. However, that being said, even though any claim amendments can be done in response to foreign national patent office action (i.e., after the PCT stage), all things being equal, it is sometimes better to address known issues before the national filing stage (i.e., in the PCT preliminary examination) so that a cleaner case is sent to the foreign national offices, as they tend to go along with the PCT preliminary examination findings.

For an amendment to the claims to be considered prior to preliminary examination it must be filed with the PCT office after the mailing of the PCT search report and before the time limit for filing the demand.  If you will want us to amend the claims along with the demand, we would prepare the amendment at our practitioner's hourly rate before filing the demand. The time it would take would depend on the scope of claim amendments you/we are sure would be necessary in light of the prior art in the search report. The idea is that if the claims are so amended beforehand it would reduce/avoid some negative patentability findings in the subsequent PCT preliminary examination, which may help make the foreign prosecution smoother.

PLEASE NOTE THAT NOT ALL COUNTRIES ABIDE BY THE ABOVE Chapter I/II deadlines, and you should continually verify the deadlines, which may change at any time, for your countries of interest.  Here is the list of country codes:
http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf

Here is the complete list of PCT Chapter I/II deadlines per country/patent office:
http://www.wipo.int/pct/en/texts/pdf/time_limits.pdf

As of Feb. 17, 2005, these were the non-standard countries: CH, LU, SE, TZ, UG, and ZM (see country codes above)

So, if you plan to enter a national filing in any of these countries, you should not wait for the search report to arrive, and file the demand for preliminary examination and enter into their Chapter II national filing prior to that countries time limits.

For some basic facts about the PCT process, please see the WIPO site at:

http://www.wipo.int/pct/en/basic_facts/basic_facts.pdf

In particular, note Items 13 and 14 (copied at the end of this email).

The "priority date" is the earliest priority date, which the PCT filing claims priority to (e.g., an earlier PPA or Utility application).  You should put 18 months as your date to act, which is just after your app will be published.  It is not usually wise to wait much longer than that if possible and practical.