Differences From U.S. Practice

For the most part, PCT applications are drafted the same as U.S. applications. But there are differences. One of the most important differences is that the PCT handles multiple inventions differently from the USPTO. The U.S. practice is to issue restriction requirements for two independent claims whenever the subject matter of the one claim can be practiced without infringing the other claim, or vice versa. Restriction requirements are often entered against apparatus and method claims, and they are exceedingly difficult to successfully traverse. Indeed, I have only rarely been successful in opposing the patent office on its restriction requirements, and then only because the method claim was deemed to be generic to the apparatus claim after the two were independently prosecuted. The PCT practice is to require the applicant to pay an extra US$ 1000 dollars (supplemental search fee) for each additional invention .

Another difference is the inclusion of figure numerals in the Abstract and Claims. The PCT and many foreign countries require that elements recited in the Abstract, and sometimes in the claims, include an identification of the corresponding element numeral in the figures. In PCT practice this is usually not a problem because the examiner will always add his own numerals, and then send a revised Abstract to the patent attorney for approval.

Another difference is paper size. The PCT requires A4 paper, which is commonly used throughout Europe and in Asia, but almost never used in the United States. From time to time this causes all sorts of formatting problems, with tables and charts, chemical structures and the like, spread across multiple pages when they were originally confined to single pages. The PCT also is very strict about margins, and what can be placed in the margins. Patent attorneys commonly place their own docket numbers in the margins, which can cause a rejection if the numbers are not sufficiently close to the edge of the paper. Still further, the PCT requires that the entire application have consecutive page numbering, except for the figures of drawing, which have their own numbering.

PCT will not allow English measurement units such as pounds and inches. One would think that the differences could be readily resolved by conversion into metric system measurements, but that is not always the case. Among other things, the measurements after conversion almost always have an appearance of much greater precision than the original. One inch, for example, would be converted to 2.54 centimeters (cm).

Another difference is that PCT abstracts must have elements identified by the element numbers used in the drawing. This is not usually a problem because the PCT examiner will annotate the abstract in the first office action (usually the search report) with the correct numbering. In fact, I prefer to let the examiner do the annotating, because then I have at least some evidence that an intelligent reader could understand the Specification sufficiently to properly annotate the abstract. In any event, the annotation suggested by the examiner is only a suggestion, and can be modified in response to that office action.

It is important to appreciate that an applicant cannot keep prosecuting the application for years on end in the PCT. Under the old rules (prior to January 2004), the applicant would receive a search report, and then if he paid the Chapter II fee he would also receive a Written Report and a Preliminary Examination Report. The applicant was entitled to respond to both the search report and the written report. Many people used those opportunities to respond, and many others never filed any responses. Under the new system (since January 2004), the receiving office issues a combined Search Report/Written Opinion, and that combined report can be used as the preliminary examination report. If the applicant files Chapter II demand he can respond to the combined report, and hopefully his comments and any claim amendments will be considered by the office when preparing the Preliminary Examination Report. I strongly recommend following that latter procedure, just as I strongly recommended filing responses to the Search Report and Written Opinion under the old system. The more the applicant can get claim issues resolved before entering the national stage, the better off he is.

Still another difference is that PCT applicants can include inventors, assignees, licensees, and even unrelated third parties. Among other things, that practice allows the patent attorney to name some local company as an applicant, or even himself, and thereby establish the needed U.S. client required for the attorney to prosecute the case before the PCT. In U.S. practice, of course, the applicants are limited to the inventors.

A relatively minor point, but one that can get the patent attorney in trouble, is that the PCT uses European date formats. Under that format 1/5/02 corresponds to May 1, 2002, and not to January 5, 2002. To avoid doubt I usually write dates in patent contexts as the elongated European format, of 5 January 2002. I try to do this even in prosecutions before the U.S. Patent Office, because those applications may well end up as priority documents to PCT applications.

There is yet another difference that applies with respect to infringement. U.S. utility applications permit the patent holder to seek a reasonable royalty from the publication date of the application through the issue date of the patent, provided the issued claims are substantially identical to the earlier published claims, and provided the infringer had actual knowledge of the publication. 35 USC § 154(d). With respect to PCT applications, a patent holder is entitled to reasonable royalty only commencing on the date that the USPTO receives a copy of the international (PCT) application under PCT Article 21(2)(a).