In This Section
2021 PCT Seminar Web Series
July 12 to August 2, 2021
2021 Virtual Patent Cooperation Treaty Seminar
This live, multi-day webinar series offers a deeper “nuts and bolts” introduction to the Patent Cooperation Treaty. Learn about recent updates and frequently performed tasks, tools and resources, strategies, and best practices.
The program is focused primarily on the important PCT work carried out by paralegals, paralegal managers, and legal staff. Because attorneys are ultimately responsible for instructing staff and the work they perform, the Webinar welcomes and encourages attorney attendance. Webinar materials and discussions have proven to be helpful to all attendees, including attorneys, paralegals, patent agents, portfolio managers, and administrative assistants.
Overview of the PCT System
Priority Claiming Under the Paris Convention and the PCT
Incorporation by Reference, Restoration of the Right of Publicity, Reinstatement of Rights
ePCT Overview and Live Demo
Strategies: Effective use of ePCT
Filing International Application under PCT
Strategies: Choosing a Receiving Office
Signature Requirements, Agents, Common Representatives, Withdrawals, and Recording Changes
Amending an International Application
Strategies: Amending Under Art. 19 and Art. 34
Fixing Mistakes and Best Practices: International and US National Phase and US National Phase Applications
Entry Into the National Stage
Strategies: National Phase Entry Considerations
PCT Regulations Changes, Updates, Near-Future Plans
International Work Sharing and Cooperative Programs
McGlinchey Stafford | Of CounselDr. Mary Drabnis prepares and prosecutes patents, handles patent appeals, and has handled patent interferences before the U.S. Patent and Trademark Office (USPTO), with a focus on the chemical arts and the mechanical arts. Mary currently serves as the Chair of AIPLA's Patent Cooperation Treaty Issues Committee.
WIPO | Senior Business AnalystAnn Bardini, a national of the United Kingdom, is Senior Business Analyst at the World Intellectual Property Organization (WIPO) where she has worked since 1990. As Head of the PCT Functional Support Section, she was responsible for the specification of the business requirements, process re-engineering and deployment strategy for the International Bureau’s electronic processing system that led to a fully paperless environment for PCT Operations at WIPO.
Viziv Technologies | Chief IP CounselMark Guetlich is Chief IP Counsel at the emerging technology startup Viziv Technologies. Mr. Guetlich has held previous government, industry, and law practice positions as Senior Counsel for International Policy and Government Affairs at the USPTO, founder of the Global IP Group, PLLC advising law firms in India and US, VP Managing Director of Patents at the SAP AG headquarters in Walldorf, Germany, and Director of International Patents and Licensing for Microsoft in Redmond, Washington.
USPTO | Deputy Director of the International Patent Legal AdministrationMichael Neas is the Deputy Director of the International Patent Legal Administration (formerly PCT Legal) at the United States Patent & Trademark Office. Mr. Neas’ staff provides training on the filing and prosecution of PCT and U.S. national stage applications to inventors, applicants, patent practitioners and paralegals.
WIPO | Deputy Director, PCT Legal DivisionMatthias Reischle, a national of Germany, is Deputy Director of the PCT Legal Division of the World Intellectual Property Organization (WIPO). Matthias holds a degree from the University of Constance, Germany (1993), and a LL.M in European Legal Studies from the College of Europe, Belgium (1994). After qualifying to practice law in Germany in 1996, he worked as a legal adviser for the International Labour Organization in Geneva.
Widerman Malek | Managing PartnerMark Malek focuses his practice on representing clients before the United States Patent and Trademark Office and counseling inventors and businesses on various intellectual property strategies. Mark enjoys working with his clients to understand their long term goals and tailoring their intellectual property strategies to help achieve those goals.
AIPLA Stands for Equality and Inclusivity, Now and Always
June 8, 2021Last June, the Association wrote an open letter to the AIPLA community in response to the killing of George Floyd and others. This March, we again published a statement to condemn acts of violence against the Asian American and Pacific Islander community. It is therefore with a profound sense of frustration and sadness that we must again address acts of hate.
AIPLA Submits Comments on Proposed Administrative Updates to the General Requirements Bulletin
May 24, 2021On May 24, 2021, AIPLA submitted comments to the Director for the Office of Enrollment and Discipline at the U.S. Patent and Trademark Office (USPTO) regarding the proposed administrative updates to the General Requirements Bulletin (GRB). The comments made were in support of the proposal to add the common Category B categories to Category A to reflect current and anticipated patenting activity, and of the proposal to amend Category B, Options 2 and 4, to permit a combination of courses that need not be sequential. AIPLA also advised considering the addition of degrees matching emerging technical fields on a regular basis and supports the inclusion of master’s and doctoral degrees as acceptable under the requirements of Category A.
AIPLA Statement on the US Administration’s Decision on Waiver of IP Protections
May 6, 2021AIPLA echoes the significant concerns shared by many other intellectual property entities about the Administration’s decision to support the World Trade Organization (WTO)’s proposed waiver of IP protections for COVID-19 vaccines. AIPLA continues to support the widespread distribution of vaccines, medicines, and other measures necessary to meet the challenges of COVID-19, however, we are concerned that the waiver approach is unlikely to lead to the desired result of widespread access to high-quality vaccines produced by qualified manufacturers and will negatively impact further innovation. AIPLA believes this decision has the potential to set an unfortunate precedent going forward.
AIPLA Submits Comments on Notification of Inquiry Regarding Copyright Alternative in Small-Claims Enforcement (“CASE”) Act Regulations
April 26, 2021On April 26, 2021, AIPLA submitted comments to the U.S. Copyright Office on Notification of Inquiry regarding Copyright Alternative in Small-Claims Enforcement (“CASE”) Act Regulations. As a general matter, AIPLA believes that it is important to keep the procedures as straight forward and accessible as possible to ensure this will be a new, simple, and low-cost process to resolve small copyright claims. AIPLA encourages the Copyright Claims Board to publish standardized forms and instructions. Additionally, AIPLA is in favor of providing a Second Notice through the U.S. Postal Service. For ease of delivery, AIPLA is in favor of a Designated Agent directory. Online submission of opt-out notices should be encouraged, but a paper option is also recommended. To strike an appropriate balance of discovery, AIPLA recommends that the CCB require a standardized, initial disclosure of relevant information.
Supreme Court Overturns Oracle Copyright Win Regarding Programming Code, Holds Fair Use
April 5, 2021On April 5, 2021, the US Supreme Court overturned Oracle’s copyright win over Google, holding that Google’s use of Oracle’s programming code from the Java SE Application Programming Interface (API) in their Android platform was a fair use and did not violate copyright laws. The Court determined that Google’s use of only the code that was needed to allow programmers to work in a new and transformative program was a fair use of that material. Writing for a 6-2 majority, Justice Breyer declined to address the first question on copyrightability and instead resolved the case focusing on the question of fair use by referencing the four guiding factors in the Copyright Act’s fair use provision. Justice Thomas filed a dissenting opinion that the ruling bypasses the question of whether the software code is protected by the Copyright Act. AIPLA filed an amicus brief in this case on January 13, 2020.