These guidelines have been provided to assist PCT receiving Offices in the establishment of a PCT electronic filing service.
Overview of required software choices
In order for a receiving Office to establish an electronic filing service for international applications, the receiving Office must make a number of implementation decisions that will determine the service offered to applicants filing at the receiving Office; these decisions relate to:
- The choice of client filing software used by applicants to create, and possibly submit, electronic filing packages to the RO ( e.g. PCT-SAFE, EPO Online Filing, etc.);
- The choice of the server software used at the receiving Office for the reception of the electronic filings;
- The choice of the application software used by the operational staff at the receiving Office to process received international Applications (essentially for processing ex-officio corrections either in XML or in image based formats (TIFF/PDF).
RO business requirements for PCT-SAFE (client configuration)
In order for applicants to use the PCT-SAFE software to file fully electronic applications with a receiving Office, certain parameters need to be set within the software to enable the software to assist and validate applicant input. A checklist of these parameters, to be completed by the receiving Office before electronic filing can be implemented, can be found in the document PCT-SAFE Receiving Office Parameters for Electronic Filing [DOC]. This document may also assist the receiving Office in ensuring that the necessary infrastructure is in place for the receipt of electronically filed PCT applications. This document should be completed and returned to the PCT e-Services Unit during the early stages of preparations for the acceptance of fully electronic filing at the receiving Office to allow sufficient time for the implementation and testing of the parameters. For further information on the RO parameters please contact the PCT e-Services Help Desk clearly indicating "RO Parameters" in the Subject line.
A checklist containing PCT electronic filing acceptance activities has been prepared as a guide [DOC]. As actions are completed, the receiving Office should notify the PCT e-Services Unit of progress made.
Notification under Section 710(a) of the Administrative Instructions
Under Section 710(a) of the Administrative Instructions Under the PCT, prior to going live with electronic filing, the receiving Office must notify the International Bureau about the types of documents and the different formats that the Office is prepared to receive electronically (see also RO Business requirements for PCT-SAFE, above). The notification should also provide details about the certification authorities accepted by the Office and the general conditions and rules relating to electronic receipt.
The official notification under Section 710(a) must be submitted to the International Bureau at least four weeks prior to the scheduled date for going live, so that WIPO can translate and publish the notification in the Official Notices (PCT Gazette) prior to that date. A sample notification has been prepared by the International Bureau for the convenience of Offices [DOC].
Digital Certificates for the receiving Office
The receiving Office will need a digital certificate that should be used to electronically sign the electronically filed PCT application that has been received from the applicant so that it can be forwarded to the International Bureau. This electronic record copy is known as the RO-WASP and contains the application as filed (applicant WASP) plus additional RO information such as the international filing date, international application number, etc. (see also Expected RO-WASP structure, below).
The WIPO Associate Certification Authority distributes digital certificates to PCT Offices, Authorities and other such entities. This service is very similar to the WIPO Customer Certification Authority which is based on VeriSign technology. Further information on the WIPO Customer Certification Authority can be found in the Certificates section. In the case of the WIPO Associate Certification Authority, a higher level of authentication of the recipient is part of the process.
Before your Office reaches the testing phase in PCT e-filing, please send a request for a WIPO Associate CA certificate to the PCT e-Services Help Desk clearly indicating "RO certificate" in the subject line.
Expected RO-WASP structure
The Record Copies of international applications filed electronically must be provided to the International Bureau in the form of wrapped and signed packages (RO-WASP), in accordance with Annex F of the PCT Administrative Instructions.
Record Copy test data for the International Bureau
At the earliest possible opportunity, each receiving Office that is intending to implement electronic filing should send test data to the International Bureau so that the structure and format of the RO-WASP can be validated in relation to the subsequent processing by the International Bureau.
Test data should be sent to the International Bureau using the selected transmission medium (CD/DVD or PCT-EDI), clearly marked for the attention of the PCT e-Services Unit, PCT Information Systems Service, WIPO, P.O. Box 18, CH-1211 Geneva 20, Switzerland.
IA number range for electronic filings
The international application number is attributed by the online filing server to each application filed online. In order to facilitate the attribution of international application numbers in parallel for both electronic and paper filings, a specific range of numbering is set for electronic filings and receiving Offices are advised to start the numbering in the 50,000 range. For example, the first electronic filing received would be given international application number PCT/IB2009/050001.
A different range of international application numbers may be used for demo filings, e.g. in the 30,000 range.
Methods of transmittal of Record Copies of electronic filings by the receiving Office to the International Bureau
In the case of international applications filed electronically, the Record Copy constitutes the electronic international application as originally filed, i.e., the applicant’s electronic submission, plus associated data added by the receiving Office. In order to comply with the Treaty and Regulations, the receiving Office must submit the electronic Record Copy to the International Bureau.
Electronic Record Copies may be sent to the International Bureau by an online transmission method known as PCT-EDI (PCT Electronic Document Interchange). In the case where on-line transmission is not possible, transmission using physical media (CD/DVD) continues to be supported.
PCT Electronic Data Interchange Service (PCT-EDI)
PCT-EDI provides a flexible, secure mechanism for the exchange of patent data and documents between Offices and the International Bureau. Offices wishing to integrate SFTP access to PCT-EDI will find this a straightforward exercise using any of several free or commercial SSH/SFTP application development tools and libraries for languages such as C++, Java and Perl. The modularity of PCT-EDI is such that other access mechanisms and protocols can be easily added if needed.
For batch packaging and file naming rules please refer to the latest version of ‘The minimal Specification for transmitting documents to the IB’ .
CD/DVD numbering convention
In the event that a receiving Office opts to submit electronic Record Copies to the International Bureau on CD/DVD, the International Bureau requires use of a CD/DVD numbering convention in order to trace that each CD/DVD transmitted is duly received and processed. CD/DVDs submitted to the International Bureau should identify the sender, be numbered consecutively and be dated.
Receiving Offices are encouraged to transmit multiple Record Copies per CD/DVD, rather than sending one CD/DVD per international application. However, it is recognized that this will depend on the volume of e-filings received per receiving Office.
Ex officio corrections
The International Bureau needs to be informed of any ex officio corrections made by the receiving Office to international applications filed electronically. The solution preferred by the International Bureau would be for the receiving Office to
- include the actual ex officio corrections in the receiving Office version of the request and
- provide the description of the ex officio corrections in xml format within the RO-WASP
However, in the event that the receiving Office is unable to provide the ex officio correction in xml format, the Office should send to the International Bureau, if possible within the WASP or otherwise alongside the electronic Record Copy, the corrected request form (RO/101).
Procedure under Rule 19.4
Under PCT Rule 19.4, where an international application is filed with an Office that is not competent to receive it, either for the reasons under Rules 19.1 or 19.2, or for reasons of the language in which the international application is filed, the receiving Office will transmit the international application to the International Bureau as receiving Office. In the case of electronic filings, the non-competent receiving Office must forward to the International Bureau as receiving Office the international application as originally filed, i.e., the applicant’s electronic submission.
It is recommended to use the normal transmission medium to transfer the international Application as originally filed along with the RO form (PCT/RO/151) indicating the transmission under Rule 19.4 to the International Bureau.
Copies of RO forms for the International Bureau
Copies for the International Bureau of RO forms and other supporting documents issued by the receiving Office in respect of international applications filed electronically should preferably be sent to the International Bureau in electronic form in separate files along with the RO-WASP containing the corresponding Record Copy.
For further information
For further information please contact the PCT e-Services Help Desk clearly indicating the corresponding subject in the Subject line.