Time to ‘Think PCT’: Rethink Your Global Patent Strategy to Preserve Your Seat at the Table

By John White
August 6, 2020

“A PCT application keeps the ‘worldwide patent pending’ status going for another 18 months. A terrific value too; a PCT filing often costs less than a single foreign filing, yet it preserves the possibility of protection in about 100% of world GDP.”

'Think PCT’Greetings; John White here. It is time for you to “Think PCT” [Patent Cooperation Treaty] anew. If the last thing you remember hearing me say about the PCT was some mnemonic about how to ensure an International Filing Date (English Applicant Requests Priority Designation!), or how to calculate an old Section 102(e) date under the FOoT/DUSE  (Fee Oath Translation/ Designate United States (publish in) English) Rule for the Patent Bar Exam: good, you still remember it! You’ve put off senility a little further by keeping these things circulating in your steel-trap like brain! (Sadly, my voice is probably still rattling around in there as well, I suppose. Sorry about that…).

But, let’s move on; it is now time to really understand the use and implementation of a PCT strategy in the modern era. The world is changing rapidly!

The Past

In the United States at least, we as practitioners had become lazy with respect to advice about what to do and where to file around the world. In Post-WWII America, 50% of the world’s GDP sat at our doorstep; and, the rest of the world, save Europe, was too diffuse or roped off, trade wise, to be of much interest. If a company had a need or interest to file elsewhere, in the big bulky industries of the day, it was more-or-less up to them to figure out where and for which applications. Once instructed, we’d find the local associates and make the foreign filings happen. We’d use the Paris route, i.e., file within the year, claiming the benefit of a prior U.S. filing under the Paris Convention, and that was pretty much that. Well, that is no longer a useful value strategy and, even if it is, it should be supplemented, at a minimum, by the filing of a PCT application.

The Present

Since the America Invents Act (AIA) and its implementation of a “First Inventor to File” system, we have all learned to love the U.S. provisional application. We have found out that “first-to-file” actually means and translates to “first-to-file”. I know, stunning: a statutory summary that actually lines up with what the statute says and means. But the reason we race to the U.S. Patent and Trademark Office (USPTO) is to not only be ahead of our fellow Americans, but to also beat the foreign filer whose filing date can beat our own, even if outside the country. Our notes of “prior invention” for pre-AIA filings seem all so quaint now. It is now a worldwide race to be “first to file”. Half of all U.S. filings originate outside the U.S. and are based on foreign priority of one sort or another. Hence, the greater need for provisional filing dates to compete with those foreign filings and to simply be “first to file”. By filing that provisional, we obtain the magic of worldwide, Paris priority dependent, “patent pending” status. C-level executives love to know that you’ve locked up the prospect of the patent protection across the globe with a simple U.S. filing. Great.

The Future

Sadly, the excitement fades quickly when it is understood that a U.S. provisional filing cannot become a patent, nor can it protect or exclude anything, and it lasts for but 12 months. What happens next? Well, in short, a lot of money gets spent if you have ambitions beyond our shores. But where? Tough question, and one to which the answer can change quickly. Who knew, in January 2020, where we’d be now economically? Supply chains and markets fracturing. Wouldn’t it have been prescient had you advised to file a PCT in addition to any foreign filing you made? A PCT application keeps the “worldwide patent pending” status going for another 18 months. A terrific value too; a PCT filing often costs less than a single foreign filing, yet it preserves the possibility of protection in about 100% of world GDP.

A PCT filing can also save you money and create faster prosecution. What? You thought PCT was a delay tactic when uncertainty prevailed? Well, perhaps. But, where you choose the United States to do your initial Search and Preliminary Report, and it turns out positive on novelty, inventive step, and industrial applicability, you’re eligible for fee discounts when entering the U.S. national stage, and you’re even eligible for patent prosecution highway (PPH) treatment, i.e., a free jump to the front of the line. That’s right – I said it: a PCT saves time and money when done right. PPH cases are allowed at a higher rate, with fewer office actions, faster. Pretty nifty. No big Prioritized Examination checks to write, in addition to the usual filing fees.

But, big picture, what does PCT do? It keeps your seat at the table of the future – across the globe. The United States is now about 20% (and falling) of the world’s GDP, which means 80% of GDP, i.e., the future, beckons from beyond our shores. Today’s industries have a much lighter footprint. The “bulk” of the past is gone. Decisions and business move at the speed of the web. A PCT preserves all options as that speed manifests. You can then, once the 30-month PCT clock has runs its course, tag on Regional Filings, i.e., European Patent Office, to keep that “patent pending” status quo alive. And, if at any point prior art turns up that “tags you out”, well you’ve saved further filings and fees for another day and another invention. Pruning is earlier, and costs are reduced.

In sum: “Think PCT”.

 

The Author

John White

John White John White is a US patent attorney and a patent lecturer. He is CEO/Managing Director of www.PCTLearningCenter.org, and he is also the principal lecturer/author of the PLI Patent Bar Review Course, a course that he originally created in 1995. By now, John has personally taught close to 65% of all practicing patent attorneys and patent agents how to successfully become admitted to the Patent Bar. John has also taught numerous US Patent Examiners at the United States Patent & Trademark Office (USPTO) in the “Law and Evidence Course” necessary for them to advance to Partial Negotiation authority as Examiners. John serves as an expert witness in patent litigations and is regarded as a leading authority on patent practice and procedure. He also maintains a select patent practice, Berenato & White, and also assists start-up technology companies increase and monetize their patent portfolios through his affiliation with SorynIPGroup.com.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 39 Comments comments. Join the discussion.

  1. MaxDrei August 6, 2020 2:29 pm

    6 months after filing the PCT, your WO publication emerges, on its front page listing as designated States pretty much all countries of the world. For another 12 months you can bask in the fiction that your invention is going to justify entering the national phase all over the world, and going to issue all over the world. Further, whether it grants or not, that WO publication will block every other filer, all over the world, from getting a patent on the same invention (unless of course they filed even earlier than you did).

    Everybody else in the world, Europe, Asia, large and small, uses PCT in this way. Why not also US filers, regardless whether individual inventor or large corporation? All benefit.

  2. Bill Wilson August 7, 2020 5:34 am

    It was helpful to have the opinion of one of the leading experts. Thanks for sharing!

  3. Anon August 7, 2020 8:01 am

    The notion that “all benefit” from a blocking use that promotes abuse of filing (items NOT enabled and never intended to BE enabled) and also is to the detriment of the US Quid Pro Quo are actually points against the system of the PCT avenue, MaxDrei.

    Those that DO benefit the most are those that would rather compete on non-innovation factors (the large, already established entities).

    Degradation and giving ‘mere publication’ the same blocking weight as vetted granted patents is an abomination, not a blessing.

  4. MaxDrei August 7, 2020 9:53 am

    Abomination? I think not. Filing PCT with a speculative and non-enabling disclosure is a total waste of money. Worse, with the emergence of the WO publication, the filer is left looking foolish and self-destructive. What you disparage, anon, is a mere figment of your imagination.

    The very purpose of any patent system is to promote the progress of the useful arts. In my experience, in real life, that stream of WO publications does wonders to promote that progress.

    This is because (outside the USA, at least) innovative corporations routinely commission FTO opinions and, when they are confronted by the disclosure content of all those WO publications of their most ardent competitors, are driven to come up with creative designs around. All those design arounds enrich the field of art and stimulate even further inventive activity.

    As to the search report attached to the WO publication, its quality varies. But if it emanates from the EPO, see the Link below, for an indication how an EPO Examiner goes about building a quality search report:

    https://www.sciencedirect.com/science/article/pii/S017221901630093X

  5. American Cowboy August 7, 2020 11:22 am

    Unfortunately, the PCT is not as universal as the main article suggests. Last time I checked, Argentina is still not a member, so if you want an Argentine patent, you need to file the old fashioned Paris only way.

  6. ipguy August 7, 2020 12:04 pm

    You got a much better search back in the days back before US ISA searches were outsourced and Examiners did the actual prior art search for a PCT application. You also wound up getting a faster US counterpart examination because the prior art search was already done.

  7. Anon August 7, 2020 12:26 pm

    MaxDrei,

    I really sometimes if you are the attorney that you claim to be, as you show such a lack of ability to apply critical thinking.

    is a total waste of money.

    Are you really that dense to think that pre-emptive effort – costing little [since mostly buzzwords need be employed as NO attempt to actually create a meaningful legal document that would withstand evaluation for enablement and other legal points] is such a waste, when it is practiced on such a large scale (for example, by the Chinese)?

    Do you really think that ‘looking foolish is a consideration? If so, then WHY THE VOLUME of practice?

    Please do not attempt to preach to me the purpose of the patent system – I am clearly your better on those points.

    (and let’s not bother with strawmen of search reports – my comment has nothing to do with those)

  8. MaxDrei August 7, 2020 4:27 pm

    Citation please. Where is your evidence that China is practising deliberately, calculatedly, and on an industrial scale, the filing and prosecution of patent applications under the PCT that are nothing more than:

    “….a speculative and non-enabling disclosure”

  9. Anon August 7, 2020 6:22 pm

    Criminy, MaxDrei, even you have posted as such (look at the rate of ‘drop out’ between mere filing and actual prosecution).

    You seriously cannot be THAT dense, can you?

  10. MaxDrei August 8, 2020 4:58 am

    So, as evidence, you rely on the fact that not every PCT filing is carried forward, two and a half years later, into the national phase in the two hundred or so Member States listed on the front page of the WO publication. Unfortunately for you though, that is evidence of a patent system working as it should.

    Not every research proposal bears fruit. In pharma it takes years to discover which initially promising molecule has potential but in engineering two years is quite enough to filter the sheep from the goats, and then to concentrate further investment on the sheep.

    You know, like not paying maintenance fees on EVERY patent all the way through to the end of the 20 year term. Pruning begins with the first year of that 20 year term. English patents judge Robin Jacob deemed them “Abandoned vessels in the shipping lanes of trade”. He was referring to registered trademarks no longer used by their owner (RTM’s need a renewal fee only every ten years or so, to keep them in force). But the same principle applies in patents too.

  11. Anon August 8, 2020 9:04 am

    Criminy again.

    It is not merely “not every.”

    It is the volume and the lack of merit (or even attempt at merit) IN that volume.

    Patents are not “research proposals.”

    That you even suggest such shows your deceit, given that supposedly you are a patent attorney. Quite opposite your assertion that this is some type of “evidence that the patent system is working as it should.”

    And your sojourn into “pruning” AFTER grant is yet another strawman, as I have never indicated that any such pruning is at issue.

    Stop obfuscating. Stay on point.

  12. Glen Wade Duff August 8, 2020 9:08 am

    Thanks John, great well written and enjoyable overview. Bonus: entertaining debates following… A healthy spar like this makes me wonder why we wasted time at the coliseum in Rome.

  13. Benny August 8, 2020 2:50 pm

    Anon at 3 seems to have recognized that the patent system can be abused by actors who seek merely to block future competition by filing speculative applications. The US system is routinely abused (or used? depends on where you stand) for the same purpose, and probably more often than the PCT route, since the filing fee is cheaper, and given the lower quality of examination, you have a fair chance of maturity to a patent.

  14. Anon August 8, 2020 5:57 pm

    Close Benny, but you miss a critical strand: mere publication MUST BE contrasted with the vetted GRANT of a patent, when one moves from mere inchoate right (albeit started in the process) versus the change of that inchoate right into the full legal rights.

    Your view of ‘abuse’ then DOES NOT REACH as you would wish it to reach.

    A further contrasting point in the realm of US Quid Pro Quo goes back to the days (and foundation) that undergirds a very real difference between what MaxDrie may wish to ‘advocate’ and what a US standpoint MUST present.

  15. Anon August 8, 2020 6:12 pm

    By the way, Benny, the ONLY time that I advise clients to not use the non-publication request route is when they must not use that route.

    That alone blows a rather large hole in your anti-patent mantra.

  16. Benny August 9, 2020 12:01 am

    On the contraty, Anon, if your only interest is blocking a competitor from obtaining a monopoly on tech (which was Max Drei’s, point ) it would be advantageous to request early publication.

  17. MaxDrei August 9, 2020 5:08 am

    As Benny points out, there is a fair chance that one’s speculative filing will mature to issue. I agree. This is in the nature of the ex Parte examination process at the PTO. The Office has no possibility to do its own enquiry into the plausibility of the claims made by the Applicant. That’s why only inter Partes disputed proceedings can effectively enquire into the validity of “duly” issued claims. These are the facts. This is the real world of a properly functioning patent system.

  18. Anon August 9, 2020 8:55 am

    As MaxDrei and Benny both miss, the ‘early publication’ is NOT a block to practicing what is published, and opens the door to abuse by those who would rather compete on non-innovation factors.

    The only thing that DOES block is the inchoate-right-turned-full-Legal-right of a granted patent.

    And yet again, MaxDrie obscures the point provided with his repeating of Benny’s miss that “fair chance that one’s speculative filing will mature to issue.

    If your “speculative” filing matures, then by definition it was not speculative.

    MaxDrei whined about my statement (while previously making the exact same statement), wants ‘citations,’ and then turns around and makes statements (without citation) that are even worse – that mere speculations are having “fair chance” to mature to patents.

    This is nothing more than “YOUR patent is bad nonsense (that Benny so often spreads).

  19. Benny August 9, 2020 12:05 pm

    Anon, I’ll have to rephrase my comment in simple English for you.
    Filing a patent application is a form of defensive publication, and more effective than using archives like IP.com since too many examiners can’t find prior art when it’s shoved under their nose in a third party observation or IDS.
    You obviously over estimate the capability of examiners to determine whether a specification is enabling. I’ve seen many granted patents in my own field of expertise which were not enabling, usually along the lines of “comprising a processor configured to perform magic”.
    Anon, you will never convince me that an examiner’s mistake can alter real world technology. By definition, either the specification was not speculative, or the examiner made a wrong assumption.

  20. MaxDrei August 9, 2020 2:00 pm

    Perhaps anon could elucidate. He states that “by definition” subject matter that runs through into a duly issued claim cannot be speculative. His logic escapes me.

    I was thinking, mainly but not exclusively, of chem/pharma/bio subject matter enabled (apparently) by the (speculative) “prophetic” worked Examples included in the patent application as filed.

    Such an outcome is common and unremarkable, and seems to me effortlessly to refute anon’s assertion.

    But perhaps anon will tell us that, by definition, such claims cannot go to issue?

    BTW, Benny, not me, first made the “fair chance” assertion. See # 13

  21. Anon August 9, 2020 9:51 pm

    But perhaps anon will tell us that, by definition, such claims cannot go to issue?

    MaxDrei,

    Are you serious? Do you even understand what law is and what law requires? You keep on doubling down on statements that no real attorney would make.

    AND “BTW” I refer to YOUR echoing OF Benny’s ‘fair chance.” I do NOT attribute that to you in the first instance.

    Benny, your “is a form of” is NOT the main intent of filing a patent.

    I know that you know next to nothing about the reality of patents, and your continued blatherings only continue to reinforce that point.

  22. Benny August 10, 2020 12:10 am

    Anon, assuming you have any clients, do you read their competitor’s patent applications and file wrappers? I’m guessing from your comments, which are strong on theory and weak on practice, that the answer is “no”.

  23. MaxDrei August 10, 2020 1:34 am

    Benny, anon thinks that he has a lot of clients and that his advice to them is of unrivalled quality. But from his history of commenting here, you will know that he has a thing about pharma patents, believing their filing to be devoid of patentable utility if they were filed any time earlier than the date on which clinical trials had proved them to be effective and safe.

    So he really is as you say “strong on theory and weak on practice”.

  24. Anon August 10, 2020 7:54 am

    Yet again both Benny and MaxDrie miss the points presented and are in the weeds with a collateral attack.

    As it turns out, I do have plenty of real world clients, so your attempt to paint my points somehow as “academic” as opposed to “real world” fails at the start.

    Further, Benny starts in (and MaxDrei mindlessly joins) with a incomplete and fallacious statement that attempts to put words in my mouth that I have NEITHER ever said, nor are pertinent to the present discussion.

    Competitors may well pay attention to the earnest filings of their competitors.

    I have never indicated otherwise.

    But in the real world (and not your imaginary ones), I do have large companies that have point blank said that they direct their innovators NOT to look at patent filings (so that the FIRM has plausible deniability against treble damages). Someone else in the firm has the role of watching competitor filings.

    All of this though has NO connection to my immediate point at hand that those who are NOT earnest and file C R A P with no intention of actually surviving scrutiny of examination GAME the system by inserting nothing more than buzzword science fiction into publications that SHOULD NOT carry the same prior art weight if actual vetted GRANTED patents.

    When you two decide to address my actual points and stop playing patty cake with false points, maybe the conversation can advance.

  25. MaxDrei August 10, 2020 8:47 am

    Should the 18 month A publications of patent applications as filed carry “the same prior art weight” as the B publication by the Patent Office of the duly examined patent applications it has granted as patents?

    anon says (all in upper case) that they SHOULD NOT.

    While I do see that peer-reviewed scientific publications should command more respect than those not subject to any peer review, I cannot see any justification to carry over that thinking over into AIA FItF patent law. The two examination processes are not comparable.

    That said, I still don’t understand how, under the AIA, in the meanwhile FItF USA, as between two parties who, independently of each other, filed on much the same subject matter on much the same date (such as in the CRISPR filings struggle between New England and CA) the question is answered, which party filed first. It seems that what is claimed by the respective parties, in their respective priority applications as filed, is supposed to play a role. Curious, when there is no requirement in a provisional to include any claims (even though that pro is supposed effectively to establish a first filing date).

    I look forward to the written reasoning of the Federal Circuit, when the AIA-filed clashing CRISPR cases get that far

  26. Anon August 10, 2020 10:11 am

    MaxDrei,

    Your insertion of my view of Pharma patents is not on point here and deals with a different legal concept of possession.

    Stay out of the weeds, son – and stay on point.

  27. Benny August 10, 2020 10:13 am

    Anon, “should not” does not equate to “does not”. Convince your examiner, not me.
    Of course stakeholders are trying to game the system. They do it because it can be done.
    I didn’t ask you whether your clients read their competitor’s applications. I asked whether YOU read them. From your response, I assume you don’t, so are unaware of some of the shenanigans going down back at the good ol’ USPTO.

  28. MaxDrei August 10, 2020 12:50 pm

    We were talking about speculative filings, ie filing without the support of a written description in your patent application of an invention reduced to practice, at least constructively. You now tell me that the concept of “possession” at the time of filing the patent application (aka the requirement for a written description of the invention at the time of filing) is “a different legal concept”.

    What? I am reminded of the catch phrase from House of Cards (the original one based in England). You might very well think that: I couldn’t possibly comment.

  29. Anon August 10, 2020 1:19 pm

    I do not know what ‘catchphrase’ you have in mind, MaxDrei, as the notion of what I speak of in the specific instances of Pharma and lacking possession are quite evidently different than the point at hand here of applications filed without intent of being prosecuted.

    Stop trying to very hard to obscure things. Try instead to stay on point.

    Benny,

    Your comment lacks a point as well. Are you trying to move the goalposts away from the point that I have actually provided? You too seem to be spending a lot of effort on items not on point here.

  30. MaxDrei August 10, 2020 5:41 pm

    Ah, so now we are debating the state of mind of the filer are we, whether there was at the time of filing an “intent” to carry the patent application through to issue? Funny, I thought we were debating whether people habitually file with non-enabling disclosures. Goalposts, goalposts.

    In case it has escaped your concentration, I ought to mention that so-called defensive filings, to keep clear the road of technical advance, are not much use if their disclosure is non-enabling, because an A publication is no use as a novelty attack on a later filing if it fails to enable that which it purports to disclose. If you want your defensive filing to be effective, to exterminate later filings, better make sure it is enabling.

  31. Anon August 10, 2020 7:03 pm

    Ah, so now we are debating the state of mind of the filer are we, whether there was at the time of filing an “intent” to carry the patent application through to issue?

    Now…?

    No.

    AGAIN — this is simply the same thing that you yourself have stated in the past.

  32. MaxDrei August 11, 2020 8:28 am

    Sigh. Your “take” on what I have stated in earlier threads has no foundation in fact. For the benefit of other readers (if there are still any there) I see that a few more words are needed, on the subject of reasons to file patent applications.

    The days of “First to Invent” are now history. The days of using against the patents of your competitors the defence that you were “First to Invent” are gone. These days, you have to be the First to File if you want to keep clear your innovative path “going forward”.

    The WO (or “A” publication) is the best way to keep the path clear because, inter alia, its world-wide prior art effect is back-dated 18 months (and in those 18 months you can pull your pending application if you decide belatedly to keep its disclosure as a trade secret).

    Filing any patent application costs a whole lot of money. Management will sanction that expense only for a convincing reason. Keeping the path clear “going forward” is a convincing enough reason because when the patents of your competitors block your way forward, it can get very expensive indeed.

    WO publication, 18 months after filing, is the day of “mission accomplished”. FtF world-wide, the full path-clearing function is achieved. After that, carrying on with prosecution, all the way to issue, is itself horribly expensive, and justified only by some further objective, (such as asserting the patent positively, to take your competitors’ products off the market). Seldom are the occasions when management can be persuaded to incur this further expense.

    Meanwhile, driven on by your WO publications, your competitors are obliged to come up with creative design arounds, and this activity promotes the progress of useful arts.

    Still disgusted, anon? What’s not to like, anon?

  33. Anon August 11, 2020 11:08 am

    My “take” has every foundation in fact — just because you find it inconvenient to deal with your past statements does not mean that you get to pretend that you never made them.

    I have no idea why you want to jump into the weeds (again) by bringing up ‘First to Invent.’ That has nothing to do with the point at hand.

    And your doubling down on the lack of touch with reality of “filing costs LOTS of money,” as some type of denial of the human condition of gaming the system is no more effective than the first time you floated that fallacy. The point is expressly not about those attempting to actually engage in prosecution to obtain actual blocking GRANTED patents, but instead deals with those who have shown the propensity for not ever having the desire to pursue prosecution.

    “Mission accomplished” by ONLY publication is an abuse of the system.

    That you seem unable (or unwilling) to recognize this shows a critical lack of honesty or basic critical thinking on your part — and is more damaging to your credibility than any rejoinder that I could offer.

  34. Anon August 11, 2020 12:51 pm

    In addition, you (gravely) err with a statement of: “Meanwhile, driven on by your WO publications, your competitors are obliged to come up with creative design arounds, and this activity promotes the progress of useful arts.

    It is NOT mere publications that oblige the creative design around effort, as THAT effort is ONLY obliged by the items that are pursued PAST mere publication and actually become granted patents.

    The only thing that ‘mere publication’ does (and mere here reflecting the LACK of pursing through prosecution to achieve grant) is an escalation of a NON-vetted filing to have the same force and effect of a truly vetted filing in keeping others from obtaining genuine patent protection.

    The crux of the matter is that those items that have not actually been vetted for enablement should not carry that same power as items that HAVE BEEN vetted.

    I fully “get” that the Sovereigns that you are more comfortable with have made a different Quid Pro Quo deal (mere chance at patent grant for publication, but that serves NO basis for elevating mere publication – and definitely PALES when compared to the US (different – and far better) Quid Pro Quo deal of actual GRANT in exchange for publication**

    **the non-publication route is available for all who do not forfeit such by pursuing patents in Sovereigns with the less beneficial exchange of publication for mere chance at a patent.

    What disgusts me is YOUR lack of inte11ectual honesty in the exchange here.

  35. MaxDrei August 11, 2020 12:51 pm

    Two reasons for not pressing on, through national phase entry, examination on the merits, grant phase costs, post-issue maintenance fees: 1) the international search report blows away patentability (it happens a lot) 2) Applicant’s R&D has advanced in a different direction in the intervening 12 months. Rational businesses know when further expense is not justified.

    In other words, you have a bee in your bonnet about “intent” on the filing date. It is preventing you from recognising the reality, that people don’t file to “game the system” but, rather, for a range of legitimate business reasons.

    Readers, feel free to make your own judgement.

  36. Anon August 11, 2020 4:08 pm

    Both of the points you offer at 35 are surely sound.

    Both of those points are NOT in relation to the specific point at hand.

    You are STILL not being inte11ectually honest in our exchange.

    I am not the one that is being prevented from grasping the reality here. That would be you. I have NEVER postulated that EVERY instance of someone not pursuing prosecution after filing is involved in skullduggery. THAT is your own phantom intruding and blocking you (from your own prior comments at that) that DO reflect that there are PLENTY out there that are engaged in skullduggery, and that THE ISSUE of whether or not to afford blocking weight to mere publications AS CONTRASTED WITH vetted and granted patents is an easy distinction to make.

    Instead, you have expended great effort and repeated sojourns into the weeds instead of dealing directing with the point that I presented.

    Make no mistake, MaxDrei, readers WILL make their own judgment. The sad thing is that YOU seem impervious to making any judgement of your own actions.

  37. MaxDrei August 11, 2020 4:10 pm

    Sigh. One forms the impression that you, anon, have never been in house, never been involved in the job of delivering a patent clearance opinion.

    Imagine: you look through the bunch of references brought to light by the clearance search, and they include a recently published WO of your client’s main competitor. What your client wants to make and sell is similar to what you see described in that WO and heading for patent grant, all over the world.

    You know that this WO is the gift to its filer that keeps on giving, all the way through the 20 year term following the PCT filing date, and through (as needed) many generations of continuing applications and divisionals. If your client brings its product to market, that competitor will from then on be breaking out further continuations and (outside the USA) divisionals with claims to read as nicely on to your client’s product as is humanly possible.

    And still you write that:

    “….it is NOT mere publications that oblige the creative design around effort,….”

    What are you going to advise your client? Perhaps i) ignore the WO or ii) wait 20 years to see what issued claims emerge or iii) monitor the PCT for the next two (or more) years in case the filer chooses not to enter the national phase or iv) make a further study of the WO, to reach a conclusion that it is not possible to distil out of the WO disclosure content any claim that is not only not invalid but also does cover what your client wants to make and sell.

    Sometimes I wonder when was the last time any client asked for your advice.

  38. MaxDrei August 11, 2020 4:19 pm

    anon, by now you are reduced to relying exclusively on a wilful mis-reading of comments of mine elsewhere. Not persuasive.

    In addition, your # 36 reminds me of the “No true Scotsman” fallacy:

    https://en.wikipedia.org/wiki/No_true_Scotsman

    I suspect we are starting to bore our readers.

  39. Anon August 11, 2020 4:53 pm

    Your views — as usual — are off.

    My comments stand in full (whether or not you are willing to own your own past comments).

    Try actually grasping the point that I have provided. There is no “no true Scotsman” fallacy in my posts.

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