World Intellectual Property Organization

PCT NEWSLETTER

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October 2014 | No. 10/2014

 

Electronic Filing and Processing of International Applications

European Patent Office: Launching of two new means of electronic filing

The European Patent Office (EPO), in its capacity as receiving Office, has notified the International Bureau that on 2 October 2014, it launched two new additional means of electronic filing:

– the EPO web-form filing service, which allows applicants to file international applications and subsequently-filed documents in PDF format; and

– the EPO case management system (CMS), which allows applicants to file international applications and subsequently-filed documents in electronic form.

Furthermore, the EPO, in its capacities as International Searching Authority, Authority specified for supplementary search and International Preliminary Examining Authority, is also prepared to receive and process subsequently-filed documents (including the demand for international preliminary examination) via the new means mentioned above.

Further information is available on the EPO’s website at:

http://www.epo.org/news-issues/news/2014/20141001.html

http://www.epo.org/law-practice/legal-texts/official-journal/president-notices/archive/webformfiling.html

http://www.epo.org/law-practice/legal-texts/official-journal/president-notices/archive/cms.html

(Updating of PCT Applicant’s Guide, Annex C (EP))

Malaysia: ePCT-Filing available at Intellectual Property Corporation of Malaysia

The Intellectual Property Corporation of Malaysia, in its capacity as receiving Office (RO/MY), has notified the IB that, with effect from 1 October 2014, it accepts international applications filed using the ePCT-Filing function in the ePCT Portal. Note that, although the Office also currently accepts international applications filed using the PCT-SAFE software, it will no longer accept such filings with effect from 1 November 2014.

A new notification containing the Office’s requirements and practices with regard to the filing of international applications in electronic form was published in the Official Notices (PCT Gazette) on 25 September 2014 at:

http://www.wipo.int/pct/en/official_notices/officialnotices.pdf

(Updating of PCT Applicant’s Guide, Annex C (MY))

New Zealand: Intellectual Property Office of New Zealand to begin receiving and processing international applications in electronic form

The Intellectual Property Office of New Zealand, in its capacity as receiving Office, has notified the IB under PCT Rule 89bis.1(d) that it is prepared to receive and process international applications in electronic form, with effect from 1 October 2014. The Office accepts international applications filed using the ePCT-Filing function in the ePCT Portal. The applicable electronic filing fee reductions listed in item 4 of the Schedule of Fees are included in Fee Table I(a).

The notification containing the Office’s requirements and practices with regard to the filing of international applications in electronic form was published in the Official Notices (PCT Gazette) on 25 September 2014 at:

http://www.wipo.int/pct/en/official_notices/officialnotices.pdf

(Updating of PCT Applicant’s Guide, Annex C (NZ))

The acceptance of ePCT-Filings by the above-mentioned Offices brings to eight the total number of receiving Offices which do so, and it is hoped that more Offices will now be encouraged to follow suit.

It is recalled that ePCT-Filing can be accessed only via ePCT private services, which requires the creation of a WIPO user account authenticated with a digital certificate. Therefore, applicants who would like to use the system, but do not yet have an account, should go to the ePCT Portal at:

https://pct.wipo.int/ePCT

and follow the links to create an account and obtain a WIPO digital certificate. Note that it is possible to carry out demo filings by clicking on the link “Try ePCT in DEMO mode” in the list of shortcuts on the ePCT Portal.

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