PCT NEWSLETTER

www.wipo.int/pct/en

May 2016 | No. 05/2016

 

Electronic Filing and Processing of International Applications

New:  use of the ePCT system for preparing the request form as part of an international application filed with the USPTO as receiving Office

As from 1 June 2016, applicants filing international applications with the United States Patent and Trademark Office (USPTO) as receiving Office (RO/US) will, subject to the limitations discussed below, be able to use ePCT (in addition to PCT‑SAFE) to generate a .zip file containing a validated request form, and then submit the .zip file electronically to RO/US as part of an international application filed using the USPTO’s electronic filing system (EFS-Web).  As with PCT‑SAFE, the .zip file generated by ePCT, which will contain the request form in character coded format, will also entitle the applicant to the reduction in the international filing fee indicated in item 4(b) of the PCT Schedule of Fees (currently 205 US dollars).

However, attention is drawn to the United States Federal Register Notice (Vol. 81, No. 88 / Friday, May 6, 2016, page 27417) at:

https://www.gpo.gov/fdsys/pkg/FR-2016-05-06/pdf/2016-10733.pdf

which sets out a limitation based on the fact that the information entered in ePCT is stored on the IB’s servers which are outside of the United States of America.  Note, in particular, that a foreign filing license from the USPTO does not authorize the export of subject matter into ePCT for the purposes of generating a request form for upload to EFS-Web and filing with RO/US.  Consequently, if the applicant intends to file an international application with RO/US via EFS‑Web, the ePCT system should be used to create the request form for upload via EFS-Web only for international applications in relation to which the technical data loaded into ePCT (which will usually simply mean the title) is not subject to relevant export controls.  Full details of the restricted categories can be found on the website of the Bureau of Industry and Security at:

https://www.bis.doc.gov/index.php/regulations/export-administration-regulations-ear

The main reasons for controls, as defined in the Commerce Control List, are:

  • Chemical and Biological Weapons
  • Nuclear Nonproliferation
  • National Security
  • Missile Technology
  • Regional Stability
  • Firearms Convention
  • Crime Control
  • Anti‑Terrorism

Note that “dual use” technologies may fall within the various categories even if their disclosed purpose is not relevant to the above reasons for controls. 

US applicants are reminded that, if they have either obtained a foreign filing license or else made an application to the USPTO at least six months earlier without any order of secrecy being made, the Commerce Control List restrictions do not apply to the use of ePCT‑Filing to prepare and file applications to the receiving Office of the International Bureau (RO/IB).  For filing with the RO/IB, all the benefits of ePCT‑Filing are available to them, such as the complete validation of the full content of the international application, including the specification, which is contained in the direct online filing package to RO/IB.  Moreover, when filing with the RO/IB using ePCT‑Filing, it is possible to pay the fees online either by credit card or by debiting a WIPO current account at the time of filing, or post‑filing if preferred.

Some of the general advantages of using ePCT are as follows:

  • ePCT is a web-based application that does not require installation and subsequent periodic updates of any software on the user’s computer;
  • unlike PCT-SAFE, which only validates data making up the request form against the version of the software installed on the user’s computer, ePCT makes all of the business rule validations and fee calculations in real‑time and checks them against the database of the IB, which holds the most up‑to‑date PCT reference data. As a result, applications prepared in this way are less likely to require correction post‑filing, and their processing is thus more efficient and cost-effective for applicants, the receiving Office and the IB; and
  • even before the filing package is downloaded from ePCT (for example, for submission to RO/US via EFS‑Web), the international application will be automatically associated with the user’s WIPO account without any need for ePCT access rights to be set up independently or requested separately, and it will therefore be possible to share access rights with other users prior to filing, if required. As a result, once the IB receives the record copy from RO/US, all users with access rights to the international application will be able to enjoy secure electronic access to the file as held by the IB and benefit from the full suite of functions available in ePCT, such as online file management and monitoring of certain time limits, electronic upload of subsequent documents in electronic form and interactive “Actions” with built‑in business validations, such as requests under PCT Rule 92bis.

For further details of all the features available in ePCT, please refer to:

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

Bulgaria and Oman to begin receiving and processing international applications in electronic form

The Patent Office of the Republic of Bulgaria and the Intellectual Property Department, Ministry of Commerce and Industry (Oman), in their capacities as receiving Offices (RO/BG and RO/OM), have notified the IB under PCT Rule 89bis.1(d) that they are prepared to receive and process international applications in electronic form with effect from 1 May 2016 and 1 June 2016, respectively. RO/BG accepts international applications filed using the ePCT-Filing function in the ePCT Portal as well as EPO online filing, and RO/OM will accept 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 indicated in Fee Table I(a) in respect of Bulgaria, but have not yet been confirmed for Oman.

The notification containing the requirements and practices of the Patent Office of the Republic of Bulgaria with regard to the filing of international applications in electronic form was published in the Official Notices (PCT Gazette) on 21 April 2016, and the notification containing the requirements and practices of the Intellectual Property Department, Ministry of Commerce and Industry (Oman) will be published shortly at:

http://www.wipo.int/pct/en/official_notices/index.html

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

Slovakia:  Industrial Property Office (Slovakia) to accept ePCT-Filings

The Industrial Property Office (Slovakia) as receiving Office (RO/SK) has notified the International Bureau (IB) that, with effect from 1 July 2016, it will accept international applications filed using the ePCT-Filing function in the ePCT Portal. 

A revised notification containing the requirements and practices of RO/SK with regard to the filing of international applications in electronic form will be published in the Official Notices (PCT Gazette) shortly at:

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

This information updates the PCT Applicant’s Guide, Annex C (SK).

The acceptance of ePCT-Filings by the Patent Office of the Republic of Bulgaria, the Intellectual Property Department, Ministry of Commerce and Industry (Oman) and the Industrial Property Office (Slovakia) will bring to 40 the total number of receiving Offices which do so1.

Brazil:  National Institute of Industrial Property (Brazil) accepts XML format for ePCT‑Filings

The National Institute of Industrial Property (Brazil) as receiving Office (RO/BR) has notified the International Bureau (IB) that, with effect from 1 May 2016, it accepts international applications filed in XML format, in addition to PDF format, in respect of ePCT-Filings.  The fee reduction under Item 4(c) of the Schedule of Fees is therefore applicable in respect of international applications filed with RO/BR with effect from 1 May 2016.  The applicable amount of the reduction in respect of such applications is the BRL equivalent amount of CHF 300.

A revised notification containing the requirements and practices of RO/BR with regard to the filing of international applications in electronic form will be published in the Official Notices (PCT Gazette) shortly at:

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

This information updates the PCT Applicant’s Guide, Annex C (BR).

_________________

  1. ePCT-Filing is now available for online filing with the following receiving Offices: RO/IB, RO/AT, RO/AU, RO/AZ, RO/BG, RO/BN, RO/BR, RO/CA, RO/CL, RO/CO, RO/CU, RO/CZ, RO/DK, RO/DZ, RO/EA, RO/EE, RO/EP, RO/FI, RO/HU, RO/ID, RO/IN, RO/IR, RO/IS, RO/LV, RO/MX, RO/MY, RO/NO, RO/NZ, (from 1 June 2016: RO/OM), RO/PH, RO/PL, RO/PT, RO/QA, RO/RU, RO/SA, RO/SE, RO/SG, (from 1 July 2016: RO/SK), RO/TR and RO/ZA.

______________________________________

  • Receive notifications of the latest issue of the PCT Newsletter and other important PCT News 

  • Back to Contents page