Oppedahl Advanced PCT Seminar


The Patent Cooperation Treaty is like a fine musical instrument. Learn how to play the PCT!

Learn everything about the Patent Cooperation Treaty in a unique small-group setting. Taught by Carl Oppedahl, this intensive seminar is limited to a small number of participants. Depending on the setting, the seminar may for example be limited to ten persons or twelve persons.

The goals of the seminar. A chief goal of the seminar is to review thoroughly all of the various filing sequences which might be used to pursue US patent coverage as well as foreign patent coverage. Each filing sequence (PCT first, PCT later, or not using PCT at all) has advantages and disadvantages. An applicant that has followed a particular filing sequence in the past may find that some other filing sequence serves the applicant's needs better in the future. Track I and PPH and PCT-PPH all have advantages and disadvantages. It is a goal of the seminar that by the conclusion of the seminar, each attendee will feel confident in helping applicants decide which filing sequence to use.

The faculty. Your professor is Carl Oppedahl, a partner in Oppedahl Patent Law Firm LLC ("OPLF"). Carl OppedahlCarl previously served as the chair of the AIPLA PCT Issues Committee and is now a member of the Board of Directors of AIPLA. He has spent more than twenty years writing and prosecuting patent applications for clients. He serves as an adjunct professor at University of Denver law school, teaching Advanced Patent Law. Carl's firm sponsors the PCT-L listserv, an email discussion group for users of the PCT with hundreds of members in the US and in other countries.

Here's what some attendees had to say about this advanced PCT seminar when it took place April 4-5, 2013:

The program. Here is a typical syllabus. Note that the sequence and timing of topics is subject to change, particularly to accommodate the interests of attendees during the seminar.

First day
Badge pickup and continental breakfast
Welcome and introductions of all attendees. Hearing each attendee's goals for the seminar
intensive and concentrated review of the PCT process from the pure-factual point of view
Interactions between the America Invents Act and the PCT
Interactions between the Patent Law Treaty and the PCT, particularly Restoration of Priority
simple lunch
Whether to use PCT at all? Should you simply use Paris Convention filings? What about Chinese utility models?
Drafting the application so that it works well in several different patent offices
Missing the 12-month date for PCT filing - restoration of priority
PCT-PPH. How it works, why we care? Comparison with Track I and other fast-US-patent initiatives
A preview of filing strategies - US non-provisional first? PCT first? serial abandonment of US provisionals?
Should we establish a non-inventor applicant under the AIA? do we care?
The importance of using ePCT in your PCT filings
The importance of using PDX and DAS in your domestic filings
Picking a Receiving Office - best practices for filing (e-filing, computer-readable Request)
Wine and cheese break
Second day
Continental breakfast
Review of goals for the second day
Picking a Searching Authority
What do do when the International Search Report and Written Opinion arrive
Should you file a Demand?
Prosecuting your international application before the International Preliminary Examining Authority
What to do when the International Preliminary Report on Patentability under Chapter II of the Treaty arrives
simple lunch
Picking places to enter the national and regional stage
Managing foreign counsel in your outbound national-phase work
Should you file a bypass continuation or should you use US national-phase entry?
Managing incoming national-phase work from foreign counsel
Best practices for filing the continuation or the US national-phase entry papers - computer-readable ADS
Tips for corporations in managing the work of outside counsel -- shared customer numbers, ePCT
Looking at the filing strategies again now that we have discussed so many tactical considerations

Private seminars for corporations

A customized seminar, generally two days in length, can be held on-site for a patent department of a corporation. One typical goal for such a seminar is to permit the corporation to consider the many different strategies that might be employed for foreign filings, with or without use of the PCT. Other typical goals for such a seminar include identifying best practices for management of outside counsel and foreign counsel, including the use of ePCT and shared customer numbers. The corporation may wish to consider how PCT-PPH may reduce the average number of office actions in US cases (which saves prosecution cost) and how PCT-PPH and other approaches such as Track I may lead to faster patent grants.

Prof. Oppedahl will maintain in confidence what is said during the seminar. It is intended, however, that such a corporation will not become a client of OPLF by virtue of conducting this seminar.

If you would like to explore the possibility of arranging an on-site advanced PCT seminar for your corporation, give OPLF a call at +1-303-252-8800.

Private seminars for law firms

A customized seminar, generally two days in length, can be held on-site for a patent firm or for the patent department of a general-practice firm. A typical goal is to bring every attorney in the firm completely up to date on new foreign filing strategies while refreshing knowledge of legacy foreign filing strategies; one such strategy which might be ideal for one client while another strategy might be ideal for a different client.

Prof. Oppedahl will maintain in confidence what is said during the seminar. It is intended, however, that such a firm will not become a client of OPLF by virtue of conducting this seminar, and clients of such a firm will not become clients of OPLF by virtue of conducting this seminar.

If you would like to explore the possibility of arranging an on-site advanced PCT seminar for your firm, give OPLF a call at +1-303-252-8800.

Attending a public seminar

Such an advanced PCT seminar, open to the public, took place on April 4-5, 2013. Quoted above are comments from some of the participants.

If you attend such an advanced PCT seminar, you will have a learning experience like no other. The very small student-teacher ratio will let you ask follow-up questions freely. The attendees around you will be as stimulating a group as you have ever interacted with in your career. The varied backgrounds of the attendees (maybe some in private practice and others in corporate employ) will permit you to see the PCT not only through the professor's eyes but also through the eyes of others.

We are now making preliminary plans for a next PCT seminar, but we have not yet selected the location. If you have a suggestion as to where we should conduct the next advanced PCT seminar, please complete the suggestion form.

Written materials? Copies of the presentation slides are provided. Because of the free-wheeling nature of the seminar, it is unlikely that the provided written materials will cover every point made during the seminar. You will want to take notes.


Here is more detailed information about the advanced PCT seminars that are open to the public

Who should attend one of the public seminars? Anyone who counsels clients on the strategy and tactics of international patent filing should attend this seminar. This includes in-house patent counsel as well as attorneys and patent agents at private patent firms.

Frequently asked questions:

What does the public seminar cost? The cost to attend a public seminar is a function in part of the cost of the seminar location. Our guess is that the next advanced PCT seminar will cost around $2500 per person.

CLE? This program has in the past been CLE accredited in Colorado and California for 13 credits. For the public seminars, we provide a Uniform Certificate of Attendance ("UCOA") to each attendee. In the past, attendees have sometimes found that they can get CLE credit in their own state (other than California or Colorado) through their own efforts. We are unable to offer assurances that this will work. In any event if you do receive CLE credit in your state, it will be because you yourself handed in the UCOA and did whatever else your state requires for CLE credit. We will offer an extra-cost fee for efforts of our staff toward getting CLE credit for you in your state, and in the past we have often succeeded at getting CLE credit in a state other than Colorado and California, but we are unable to promise that payment of this fee will obtain a grant of CLE credit in your state.

Will there be wifi Internet acccess in the seminar room? Yes, for the public seminars there will be free wifi Internet access in the seminar room. There will also be electrical power outlets so that you can plug in your notebook computer. Despite this, keep in mind that you are paying quite a lot of money to attend this program. Time that you spend checking email or doing other non-class-related activities will draw your attention away from the work of the seminar. This unique learning opportunity, with its extremely small student-teacher ratio, will offer the greatest benefit if you are able to give nearly your entire attention to it.

Does this seminar include meals? The for the public seminars, the seminar registration includes a simple lunch on the first day and a simple lunch on the second day. It also includes a light continental breakfast each day. Dinner is not included in the seminar registration.

Does this seminar include hotel rooms? The seminar registration fee does not include hotel rooms. Some attendees who live in the geographic area of the seminar may choose to commute to and from the seminar location.

What are the networking opportunities at this seminar? There will be a simple wine and beverage reception immediately after the end of class on the first day. In addition, those who wish to join Professor Oppedahl for dinner on the evening of the first day (Dutch treat) may do so. Here is what Professor Oppedahl says about networking:

As I look back over many years of practice, I realize that nearly every good thing that ever happened to me professionally happened during a coffee break or reception at a professional or educational meeting. Nothing would delight me more than to hear, years from now, that someone attending this seminar had something good happen to them during a social moment at the seminar.

Refund policy. For the public seminars, due to the need for OPLF to be able to plan for the very limited enrollment, no refunds will be available. A paid registration will be transferable to another person if desired. Due to the limited enrollment, the seminar may sell out and there may be a waiting list. In that event, OPLF may be able to facilitate an accommodation between someone on the waiting list and a registrant desiring a refund.

Disclaimer. Please keep in mind that attendance at this seminar does not make you or your corporation or firm a client of Carl Oppedahl or OPLF, nor does it make Prof. Oppedahl or OPLF your lawyer.