Actively prosecuting applications in the international phase under the Patent Cooperation Treaty (PCT) prior to entry into the U.S. national phase may be a viable means to afford applicants with needed opportunity to argue the validity of and amend claims. This could be particularly valuable if the United States Patent and Trademark Office's (USPTO) proposed rules are implemented. See, IP News & Comment, October 2007, http://www.venable.com/publications.cfm (Newsletters/IP News & Comment). If the USPTO places a limit on the number of continuation applications and Requests for Continued Examination (RCEs), applicants may not be able to obtain full and appropriate protection for subject matter disclosed in a patent application during the limited prosecution available. Although the U.S. District Court for the Eastern District of Virginia has permanently enjoined the USPTO from implementing its proposed rules that limit an applicant to two continuation (or continuation-in-part) applications and one RCE, the ultimate disposition of these rules is not clear, because the USPTO may appeal the decision. See, Tafas v. Dudas 1:07cv846 (JCC) Consolidated with SmithKline Beecham Corp. v. Dudas 1:07cv1008 (JCC) (E.D. Va. Apr. 1, 2008); 72 Fed. Reg. 46,716-843 (Aug. 21, 2007).

The International Searching Authority (ISA) must have first issued the International Search Report (ISR) along with the Written Opinion before an applicant can amend claims or have arguments considered by the International Examining Authority (IEA). Claims can be amended under PCT Article 19, or more extensive amendments and arguments are possible under PCT Article 34.

Amendment Under Article 19, and Contrast with Amendment Under Article 34

If the applicant wishes to amend only the claims in the international phase, the applicant can invoke the mechanism of PCT Article 19. An Article 19 amendment can only be used to amend the claims, not the written description or drawings, must be made within two months of issuance of the International Search Report (ISR), and cannot add new matter. No PCT Chapter II Demand need be filed and no fee is required for amending claims under Article 19.

If the ISR and Written Opinion cite prior art against which the applicant believes no effective argument can be made for patentability, it may be appropriate to amend claims under PCT Article 19. The claims will then be in better condition for national phase examination, and the applicant may avoid an iteration of amendment or argument. This might facilitate allowance of claims of satisfactory scope without the need for continuations or more lengthy prosecution. Furthermore, provisional rights may be enhanced, because claims as amended under Article 19 are included in a republished international application. Provisional rights provide that upon grant of a national patent, the applicant may be able to obtain a royalty back to the time of republication. See, 35 U.S.C. § 154(d).

PCT Article 34 allows amendment of the written description, drawings, and/or claims (collectively, the specification), constrained only by the prohibition against introducing new matter. That is, the applicant may move information from one part of the specification to another, e.g., from the written description to the claims, or reformulate text. To file an Article 34 amendment, the applicant must file a PCT Chapter II Demand within three months of issuance of the ISR or by 22 months from the priority date, whichever is later, and pay a fee. Under Chapter II, the applicant may engage in formal dialog with the IEA, for example, to argue that the claims meet the criteria of novelty, inventive step, and utility.

Although amendments made to the specification under PCT Article 34 will be conveyed to national patent offices upon entry into the national phase, an Article 34 amendment will not cause the international application to be republished as amended. Thus, Article 34 amendments are not useful for enhancing provisional rights.

Formal Dialog with the International Examining Authority Following a Chapter II Demand

If, in contrast to the above example, the applicant believes that the International Searching Authority's (ISA's) finding of a lack of novelty and/or inventive step over prior art in the International Search Report (ISR) and Written Opinion is clearly incorrect, the applicant may file a PCT Chapter II Demand and present an argument to the International Examining Authority (IEA). The IEA will respond and issue an International Preliminary Report on Patentability (IPRP) that should take into consideration the applicant's arguments. If the Chapter II Demand is filed and IPRP received sufficiently early, the applicant may have the opportunity to engage in multiple exchanges of arguments with the IEA.

Such dialog with the IEA may serve to expedite allowance of claims in the subsequent national phase. For example, the applicant can present the exchange with the IEA upon entry into the national phase. The PTO may accord persuasive weight to such an exchange, so that the U.S. examiner does not make the same rejection made in the ISR and Written Opinion. The applicant may thereby avoid an iteration of amendment or argument. This might facilitate allowance of claims of satisfactory scope without the need for continuations or more lengthy prosecution.

On the other hand, certain U.S. patentability standards differ from standards applied in the international phase. Thus, an argument effective in the international phase may be less effective in the subsequent U.S. national phase. Furthermore, if a subsequent U.S. national examiner perceives an applicant's argument against a position of the ISA as weak, the U.S. national examiner may dismiss the arguments as already having been considered in the international phase. Importantly, the estoppel effect of arguments presented during the international phase is not clear.

The requirement that the ISR have issued can constrain the ability of an applicant to amend claims in the international phase, either by invoking Article 19 or by filing a Chapter II Demand and invoking Article 34, or to argue before the IEA by filing a Chapter II Demand. Although the ISR should be issued by the 16th month from the priority date, often the ISA issues the ISR much later. Late issuance of the ISR may weigh against or preclude amendment or argument in the international phase.

In summary, an applicant should evaluate on a case-by-case basis whether to actively prosecute an application in the international phase, for example, by amending claims under PCT Article 19 or presenting argument through filing a PCT Chapter II Demand. Should the U.S. succeed in imposing limits on the number of continuations and requests for continued examination (RCEs) that an applicant may file, such international prosecution may allow claims of broader scope to be obtained than if prosecution were conducted solely before the USPTO in the national phase. Two circumstances in which an applicant may wish to actively prosecute an application in the international phase are as follow:

(A) The applicant believes that a claim against which prior art is presented in the ISR and Written Opinion will not survive in the subsequent national phase, so that the claim should be already amended in the international phase.

(B) A rejection in the ISR and Written Opinion is clearly invalid or irrelevant in the national phase, so that arguing against the rejection in the international phase may avoid the subsequent national phase examiner making a similar rejection.

Circumstances (A) and (B) illustrate that actively prosecuting an application in the international phase may be appropriate at two extremes of the spectrum of strength of the ISA's rejection of a claim in the ISR and Written Opinion: very strong or very weak.