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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Tuesday, April 18, 2023

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will provide guidance for patent practitioners on the Patent Cooperation Treaty (PCT). The panel will discuss the system's advantages and disadvantages and how to strategically use the PCT to obtain international patent protection.

Faculty

Rebecca M. McNeill
Partner
MCNEILL, PLLC

Ms. McNeill offers intellectual property strategy and advises on new application preparation, patent prosecution (U.S. and foreign), and preparation and negotiation of IP transactions, and provides the full scope of counseling services. She has a special interest in counseling clients on patent application filing and developing worldwide prosecution strategies in concert with clients’ business goals. She has managed and directed the U.S. and international patent portfolios for U.S. clients and has overseen the U.S. patent portfolio for international clients in Europe and Asia.

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Jens Viktor Nørgaard
Partner, Head of Biotechnology & Plant Sciences
HØIBERG

Mr. Nørgaard counsels on all areas of life science and medical technology including anything from genetics and molecular biology to drugs, diagnostics, analytical equipment, medical equipment, and greentech. He counsels on IPR strategy, IPR organization and management of companies, business development, license agreements, freedom-to-operate, validity of patents, oppositions and appeals before the EPO (European Patent Office), in addition to drafting and prosecution of patent applications. He also serves as a technical judge in Norway. Since 2015 he has served as Chairman of the Board at HØIBERG.

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Description

When seeking patent protection, counsel should consider whether the client needs patent protection outside the U.S. If so, counsel may want to use the PCT--the heart of the international patent system. The PCT is a cost-effective option and provides many benefits for applicants that can be tailored according to applicant’s needs.

From writing the application to selecting an RO and ISA, patent counsel need a clear understanding of the PCT system, how it works, and its advantages and disadvantages to guide clients through the process. The speakers will also discuss recent PCT rule changes.

Listen as our authoritative panel of patent attorneys provides guidance on leveraging the PCT to get international patent protection. The panel will discuss effective use of the PCT and outline the advantages and disadvantages of using the PCT. The panel will also discuss the selection of the RO and ISA, priority rights, and incorporation by reference.

Outline

  1. Advantages and disadvantages of using PCT
  2. Writing an international application
  3. Receiving office selection
  4. International searching authority selection
  5. Priority applications
  6. Making changes to the application
  7. Unity of invention
  8. Active prosecution in the PCT phase
  9. National stage entry
  10. Recent regulatory changes
  11. Getting help in your PCT application

Benefits

The panel will review these and other key issues:

  • What are the benefits of and reasons to use the PCT?
  • What should patent counsel weigh when determining where to file the international application?
  • What should patent practitioners consider when selecting the ISA?
  • When should patent counsel consider filing a Demand for International Examination?
  • When to use the Patent Prosecution Highway after positive international examination
  • When to file through the PCT and when to consider Paris Convention filings in PCT countries