PCT NEWSLETTER

www.wipo.int/pct/en

November 2016 | No. 11/2016

 

Electronic Filing and Processing of International Applications

Japan Patent Office

The Japan Patent Office (JPO), in its capacity as receiving Office (RO/JP), has notified the International Bureau (IB) that, with effect from 1 January 2017, it will no longer accept the filing of international applications in electronic form using the PCT-SAFE software.  As from that date, the JPO PAS will be the only means of electronic filing before RO/JP.

Furthermore, the JPO, in its capacity as receiving Office, International Searching Authority and International Preliminary Examining Authority, is prepared to receive and process subsequently filed documents filed in electronic form to the extent supported by JPO PAS.

A revised notification containing the requirements and practices of RO/JP with regard to the filing of international applications in electronic form was published in the Official Notices (PCT Gazette) on 27 October 2016 at:

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

Finnish Patent and Registration Office

The Finnish Patent and Registration Office (PRH), in its capacity as receiving Office (RO/FI), has notified the IB that, with effect from 1 January 2017, it will no longer accept the filing of international applications in electronic form using the PCT-SAFE software.  It is recalled that RO/FI also accepts XML and PDF files filed using ePCT‑Filing or EPO Online Filing.

A revised notification containing the requirements and practices of RO/FI with regard to the filing of international applications in electronic form was published in the Official Notices (PCT Gazette) on 10 November 2016 at:

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

European Patent Office

Further to the information that was published in PCT Newsletter No. 10/2016 regarding the new possibility, since 1 November 2016, for applicants to use ePCT private services for the online transmittal to the European Patent Office (EPO) of post‑filing documents relating to the international application under PCT Rule 89bis.2, please see below some practical information regarding such transmission.

For submitting all post‑filing documents to the EPO, in its capacity as receiving Office (RO), International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA), the applicant can use the ePCT “Upload documents” function, selecting RO/EP, ISA/EP or IPEA/EP as recipient, where applicable.  As far as submitting the demand for international preliminary examination via the ePCT Action is concerned, if the competent IPEA selected is EP, the demand and any attachments will be routed direct to IPEA/EP and will no longer transit via the IB with Form PCT/IB/368.

Note that documents submitted to RO/EP, ISA/EP and IPEA/EP via ePCT private services are routed to the EPO via the PCT Electronic Data Interchange (EDI) protocol, which is a secure daily online batch transmission, meaning that the documents will be available in the EPO’s electronic processing system within a maximum of 24 hours from the time of upload in ePCT private services.  The documents are considered received by the EPO at the time when they are uploaded and are immediately available via ePCT private services to users with access rights to the international application, including EPO staff who are registered ePCT users. 

Users are reminded that, when using ePCT public services, documents can be submitted only to the International Bureau (IB).  In order to benefit from all the advantages of ePCT private services, including initial filing of PCT applications and transmittal of subsequently filed documents to participating receiving Offices and international authorities via ePCT, applicants need to set up additional authentication for their WIPO account using a digital certificate, or an EPO smart card.  For further details please visit: 

http://www.wipo.int/pct/en/epct/pdf/epct_getting_started.pdf

A revised notification containing the requirements and practices of the EPO with regard to the filing of international applications in electronic form was published in the Official Notices (PCT Gazette) on 3 November 2016 at:

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

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