PCT Newsletter 10/2018: Practical Advice

Warning - Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Requesting customized PCT training

Q: Our company is interested in setting up in-house training on best practices for the use of the Patent Cooperation Treaty and the use of ePCT to help us manage our portfolio of pending PCT patent applications. Is it possible to arrange for such training, and if so, how can we request this?

A: WIPO provides speakers for many PCT seminars (both basic and advanced levels), including the use of ePCT, in all 10 of the WIPO publication languages and in all regions of the world. The PCT Seminar Calendar does not indicate all the seminars presented by WIPO staff, as it only includes seminars which are open to the public. Provided that the necessary conditions are met, WIPO also provides speakers for private in‑house seminars to companies, IP firms or other organizations. In‑house seminars are usually restricted to a particular group of people, most likely employees of a company or attorneys and staff at law firms, although the organizers can, if they wish, open them to the public.

WIPO encourages and supports in-house training. Some of the advantages of such training programs are:

they offer the opportunity for training that is closely tailored to the specific needs and goals of the organization involved;
they can skip or shorten the time spent on topics that are of limited interest, and topics of particular interest can be covered in greater detail;
they can properly correspond to the participants’ level of PCT knowledge;
participants are able to ask more questions and may feel more comfortable speaking openly about their needs and goals than in a public program; and
participants do not normally have to spend time travelling to the seminar venue, and travel and accommodation expenses can be avoided.

If a proposed training program has a sufficient number of attendees (preferably, a minimum of 15), and depending on the availability of WIPO staff to give such training, WIPO is sometimes able to provide a speaker (or speakers) directly.

Alternatively, a number of training providers external to WIPO also offer in‑house PCT training programs for companies (which may or may not be open to the public), in English, as well as in a number of different languages. Such in-house PCT training organized by third parties may include WIPO staff as speakers or co‑speakers, or may be delivered solely by non-WIPO speakers with extensive PCT experience, for example, experienced patent attorneys or patent Office staff¹. WIPO is, of course, not in a position to endorse or recommend any particular external training provider, but a number of such organizers are typically listed in the PCT Seminar Calendar, which is available at:

https://www.wipo.int/pct/en/seminar/seminar.pdf

Where there is no WIPO speaker, the seminar will, provided that it is open to the public, be indicated in the calendar (when specifically requested by the external training provider to do so) as a “PCT event without WIPO speakers”. Recent external in‑house PCT training programs that WIPO is aware of have included topics such as:

exploration of various filing scenarios and a comparison of advantages and disadvantages of those scenarios;
strategic use of Chapter II of the PCT (the demand for international preliminary examination and amendments under PCT Article 34) and interplay with the Patent Prosecution Highway;
best practices for drafting patent applications for international patent practice;
use of ePCT for collaborative workflow when filing PCT applications;
leveraging ePCT for management of pending PCT applications and coordination between corporations and outside intellectual property firms; and
best practices for docketing of PCT prosecution.

If you are interested in organizing an in‑house seminar with WIPO’s participation, please contact the PCT Legal and User Support Section at WIPO, preferably by e‑mail to:

pct.training@wipo.int

Otherwise, you can also contact an external provider directly.

If you are requesting a WIPO speaker, please specify what topics you would like the seminar to cover, how many people you expect to attend, and the participants’ level of PCT knowledge. Please note that, when providing a WIPO staff member or consultant, WIPO will typically request a financial contribution towards the speaker’s (or speakers’) expenses. WIPO does not, however, require payment of an honorarium. Please also bear in mind that it takes time to prepare a seminar, and requests should be made with as much advance notice as possible, preferably at least three months in advance of the proposed date of the seminar. Note also that the availability and work commitments of the speaker(s) will determine the extent to which it is possible to accept in‑house in person training requests.

In addition to in person training, WIPO increasingly offers PCT webinars or seminars delivered by video‑conference, which do not require any financial contribution towards expenses, but for which we would still require a minimum number of expected participants.

For example, some staff at the European Patent Office and the United States Patent and Trademark Office are regular speakers at PCT Seminars.