ePCT: for even easier international patent filing
By Silke Weiss PCT Legal Division, WIPO
In an age of increasing globalization, companies large and small are seeking patent protection in multiple countries. WIPO’s Patent Cooperation Treaty (PCT) provides essential services to facilitate this process and is an increasingly popular means of filing for international patent protection. In 2011 alone, over 181,000 international patent applications were filed under the Treaty. The patent system as it exists today, however, is still characterized by processes that are largely rooted in the physical exchange of documents. This can cause delays and impede the system’s operational efficiency. In May 2011, WIPO launched ePCT, a new online service that will make the process of international patent application filing far easier and more efficient, and offers users and national patent offices a number of advantages. ePCT users are heralding it as the greatest innovation in the PCT system over the past 30 years. This article outlines the services available under ePCT and highlights some of its main benefits.
The first international patent application
(IB2011/051282) to be accessed online using ePCT
relates to an invention by the Pasteur Institute in Paris
for a method to increase the number of detectable
photons during the imaging of a biological marker to
improve the observation of phenomena such as
embryogenesis or tumor development.
(Photo: Pasteur Institute)
“Just 12 months ago, ePCT was a small-scale pilot scheme”, notes WIPO Director General Francis Gurry. “Today it is being used by applicants from over 80 countries and has recently been made available to patent offices. It is proving to be extremely popular. It responds to innovators’ need for an on-line tool to navigate the international patent system effectively, and is among the most important of the current improvements to the PCT.”
The patent system has grown up with processes that are still largely based on the exchange of paper documents. This means that the same patent application and associated documents are often held by multiple actors working within the patent system. These include patent applicants and their representatives in different countries, patent offices, and patent searching and examining authorities. ePCT offers a virtual alternative enabling the electronic exchange of patent-related data between interested parties securely, quickly and easily. It establishes a single electronic platform that is accessible to all those involved in the international patenting process. Once the system is fully functional, applicants can submit their international patent applications online and these are instantly available to the 18 International Searching Authorities responsible for searching the prior art to determine the patentability of an invention. The results of this search are then readily available to applicants via their dedicated ePCT file.
ePCT offers two types of service: public services that, by simply establishing a user account, enable users to upload documents relating to all international applications filed under the PCT; and private services that, by uploading a digital certificate, enable users to access and manage their international applications filed as of January 1, 2009.
With ePCT, users can monitor the status of their international application and modify it as necessary in real-time. They can also communicate securely with WIPO’s PCT examiners, monitor deadlines (thanks to a running timeline feature) and receive notifications of events and necessary action. Users can also give access rights to others according to whether they are an “eOwner”, an “eEditor” or an “eViewer”. This feature allows a patent agent, for example, to share a file with colleagues, or with the applicants they are representing.
A user’s opinion
“ePCT is part of the daily workflow of Oppedahl Patent Law Firm (OPLF),” says Carl Oppedahl, one of the earliest adopters of the service. OPLF encourages its foreign clients to use ePCT when they seek patent protection in the US by offering them a discount. “ePCT permits us to carry out the US national phase entry more efficiently,” notes Mr. Oppedahl. “Access to ePCT allows us to copy and paste bibliographic data rather than hand-keying it, and permits early access to important documents,” he explains.
Similarly, ePCT also helps the firm when its clients are seeking to enter the national phase outside the US. “It used to be that when we would entrust a national phase entry task to a patent firm [outside the US], we had to send lots of PDF files. It was all too easy to forget to send a file that might be needed in a particular country, or to send a file that was not actually needed, either of which wastes time or risks sending an email that was too large for the recipient's email system. Now, with ePCT, when our client tells us to enter the national phase in a particular country, it is simply a matter of a couple of mouse clicks to give ePCT access to the international application to the intended foreign law firm,” he explains. “In this way, the foreign law firm has direct access to everything it needs to carry out the national phase entry”.
Patent offices pilot ePCT
In July 2012, ePCT was rolled-out for use by patent offices in their capacity as either a PCT receiving office or a PCT International Authority. Five national patent offices are currently piloting ePCT. With access to a web browser and a scanner, patent offices can use ePCT to simplify communication in relation to international patent applications in a secure on-line environment. “ePCT is of particular benefit to smaller patent offices which do not receive a large number of PCT applications,” explains Jim Pooley, Deputy Director General of WIPO’s Innovation and Technology Sector who oversees PCT matters.
The Moroccan Industrial and Commercial Property Office which received 84 international applications from Moroccan applicants in the last five years is participating in the ePCT pilot for patent offices. “ePCT is an easy, cost-effective and secure means for making PCT applications available to the International Bureau and International Authorities, and it is a big improvement over the paper system we used before,” says Mr. Adil El Maliki, Director General of the Moroccan Industrial and Commercial Property Office. He also stresses that “ePCT provides an important level playing field for applicants like small and medium-sized enterprises (SMEs) and universities by enhancing their capacity to administer their international applications”.
More efficient communication between offices also benefits applicants who rely on timely access to PCT work products, such as search reports and written opinions, to fine-tune their patenting strategies. “Applicants rely heavily on the information in the international search report and the written opinion for further business decisions, such as whether, or in what countries, to pursue the application,” notes Mr. Pooley. “ePCT enables users to receive PCT documents immediately, without any postal or other delay. They can then use this information to make sensible business decisions.”
Public participation in patent examination
In July 2012, ePCT’s third party observation system went live allowing any interested party to submit observations concerning prior art that may affect the patentability of an invention that is the subject of a published PCT application. “This additional feature is an example of using the power of the Internet to assist in quality outcomes in the patent process,” Mr. Gurry observes. “As of mid-September, 18 third-party observations had been submitted via the system. While relatively small, the seriousness of the submissions thus far vindicates the usefulness of the new facility.”
Observations are made available to all relevant International Authorities and national offices to support their evaluation of the patentability of related applications. ePCT’s third party observation system interfaces with WIPO’s largest database, PATENTSCOPE, which currently offers access to over 14 million patent applications.
“The main goal in involving the public is to help in identifying relevant prior art to assess whether an invention is patentable. This helps improve the quality of the international prior art searches carried out during the international phase of a PCT application and which are communicated to all national offices of PCT member states”, explains Michael Richardson, Deputy Director of the PCT Business Development Division. “While the quality of the international prior art searches is usually good, it can never be perfect. There can always be mistakes, as well as prior art that only persons working in the particular field will know about. ePCT’s third-party observation system gives third parties an opportunity to easily submit information referring to prior art which they believe is relevant to the question of whether the invention claimed in the international application is new and/or involves an inventive step,” he notes.
ePCT’s third party observation system is easy to use and unlike some other similar systems, is free of charge. Third parties can - under a cloak of anonymity, if so wished - submit their observations from the date of publication of an international application up to 28 months after the priority date specified in the application. Observations may be submitted in one of the 10 PCT publication languages, although copies of prior art documents may be submitted in any language.
To submit an observation, a third party holding an ordinary WIPO user account can go to the relevant international application within PATENTSCOPE, input their observations and press the “submit observation” button. All observations are published on PATENTSCOPE and communicated to the relevant International Authorities and national patent offices obviating the need to submit the same observations individually to every patent office concerned.
“This tool gives users a chance to intervene early in the patent granting process”, notes Mr. Richardson. “Instead of having to file lawsuits, potentially in many countries, against a competitor who already holds a granted patent on a given technology, users can intervene before a patent is granted on their technology and thereby reduce the risk of litigation and associated costs.”
A new version of ePCT, expected by the end of 2012, will introduce a number of new features, most notably, an online web-based filing system making it possible for applicants to file PCT applications directly via a web-browser and eliminating the need to download special software. This feature will initially be available to a group of pilot users for applications filed with the International Bureau as PCT receiving office and then will be gradually rolled-out to all other users and PCT receiving offices. “The web filing system will make it much easier to file patent applications, especially for applicants from developing countries and small offices which, unlike larger offices, can’t afford to set up their own electronic filing systems”, notes Mr. Pooley. The ePCT web filing system will be hosted and maintained by the International Bureau. In this way, small national patent offices will be able to receive applications electronically instead of having to develop and maintain their own local electronic filing system. This is a distinct advantage given the costs associated with developing such systems, which often exceed the fees smaller offices receive from patent applicants. “The web filing system will effectively allow smaller offices to offer their applicants the same level of service as their larger counterparts without any further investment,” Mr. Pooley explains.
Want to know more?
The PCT Newsletter regularly contains up to the minute information about new ePCT developments, and a series of monthly webinars on the use of ePCT is currently running. Participation is free of charge, so if you are interested in learning more, why not sign up to the next webinar?
The PCT in a nutshell
The PCT system has so far been adopted by 146 countries. It offers applicants a cost-effective, simplified and efficient means of seeking patent protection in multiple countries.
WIPO’s Patent Cooperation Treaty (PCT) currently
comprises 146 member states.
The PCT patent application filing system includes two phases: an international phase during which an international application is filed and an International Searching Authority undertakes an international search, resulting in a search report containing citations of relevant prior art and a written opinion on the potential patentability of the invention. International publication of the application also takes place during this phase, which includes an option to undertake international preliminary examination of an application. This is followed by a national/regional phase during which the decision is taken as to whether or not an application qualifies for patent protection.
The PCT offers numerous advantages. Applicants have more time (up to 18 months) to reflect on the desirability of seeking protection in foreign countries, to appoint local patent agents in those countries, to prepare the required translations and pay the national fees. Applicants are assured that PCT-compliant international applications cannot be rejected on formal grounds by any designated office during the national phase; they can also better evaluate the chances of obtaining a patent on the basis of the international search report and written opinion. Moreover, during international preliminary examination, applicants can amend their international application before processing by the designated offices.
Patent offices also benefit insofar as the search and examination work they undertake can be considerably reduced. Upon publication of the international application together with its international search report, third parties are better placed to formulate an opinion about the patentability of a claimed invention.