February 6, 2023

Volume XIII, Number 37


February 06, 2023

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Prosecution Pointers 295-299

Prosecution Pointer 295

An international patent application (e.g., PCT application) can be filed in any language which the receiving Office accepts. If you file your application in a language which is not accepted by the International Searching Authority (ISA) that is to carry out the international search, you will be required to furnish a translation of the application for the purposes of international search. Receiving Offices are, however, obliged to accept filings in at least one language which is both a language accepted by the competent ISA that is to carry out the international search and a “publication language”, that is, one of the languages in which international patent applications are published (e.g., Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian, and Spanish). Thus, there is always the option of filing your international patent application in at least one language from which no translation is required for either PCT international search or publication purposes.

Prosecution Pointer 296

The United States Patent and Trademark Office (USPTO) issued an interim rule further expanding the availability of prioritized examination (Track One) by increasing the limit on the number of Track One requests that may be accepted in a fiscal year from 12,000 to 15,000. The Federal Register notice is available here.

Prosecution Pointer 297

The following have been appointed by the PCT Contracting States as International Searching Authorities (ISAs): the national Offices of Australia, Austria, Brazil, Canada, China, Chile, Egypt, Finland, India, Israel, Japan, the Philippines, the Republic of Korea, the Russian Federation, Singapore, Spain, Sweden, Turkey, Ukraine and the United States of America, and the following regional Offices, the European Patent Office, the Nordic Patent Institute, and the Visegrad Patent Institute. The availability of a particular ISA to the nationals or residents of a country is determined by the receiving Office where the international application was filed.

Prosecution Pointer 298

The USPTO extended the After-Final Consideration Pilot 2.0 (AFCP 2.0) to September 30, 2022. The AFCP 2.0 program is part of the USPTO’s efforts for compact prosecution and to increase collaboration between examiners and stakeholders. AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection. Additionally, under AFCP 2.0, examiners can also use the additional time to schedule and conduct an interview to discuss the results of their search and/or consideration with the stakeholder.

Prosecution Pointer 299

WIPO has a web page that culminates the intellectual property Offices’ closed dates by the respective Offices. They are then expanded and updated with subsequent information received by the International Bureau. A link can be found here.

© 2023 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 293

About this Author

Whether defendant or plaintiff, you want an intellectual property (IP) litigation team focused on the best outcome possible for your case and your goals. When your company is faced with an IP dispute, the stakes can be staggering—literally millions or hundreds of millions of dollars can be on the line. A loss may even put an end to your business. When faced with such potential risks, you need a litigation team with deep knowledge of both the technology or science at hand and the law. You need seasoned litigators who bring a multifaceted and strategic approach to the dispute, together with...

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