PCT Newsletter 01/2021: Practical Advice

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Switching from PCT-SAFE to ePCT (the example of an applicant filing with the United States Patent and Trademark Office as receiving Office)

Q:  My company files a large number of PCT applications with the United States Patent and Trademark Office as receiving Office (RO/US).  We have been using the PCT-SAFE software to prepare the request form, but installing and continually updating the software for our many users is complicated and time‑consuming.  I read that the restrictions for the use of ePCT to prepare the request form for filing with RO/US have been relaxed, so if we have a foreign filing license, can we now use this option?  Also, is there any training available on how to start using ePCT for the filing and management of international applications?

A:  As was announced in PCT Newsletter No. 10/2020, the United States Patent and Trademark Office (USPTO) adopted, on 30 September 2020, amendments to its foreign filing license rules to facilitate the use of ePCT by applicants for the preparation of the request form when filing international applications with RO/US.1  As a consequence, provided that PCT applicants in the U.S.:

  • have met any national security provisions prior to filing, including obtaining any required foreign filing license; and
  • are not exporting additional subject matter not included within the scope of the foreign filing license from the USPTO,

they can now prepare their international application using ePCT and then generate a .zip file containing the text of the abstract and a validated request form, including the title of the invention, for upload to RO/US, together with the rest of the application, via one of the USPTO’s electronic filing systems (the EFS‑Web or Patent Center), without having any of the previous concerns about the export of technical data into ePCT.  For further information, please refer to PCT Newsletter No. 10/2020, page 2 (under “Electronic Filing and Processing of International Applications”) at:

https://www.wipo.int/edocs/pctndocs/en/2020/pct_news_2020_10.pdf

and to the information published in the U.S. Federal Register at:

https://www.federalregister.gov/documents/2020/09/30/2020-18743/facilitating-the-use-of-the-world-intellectual-property-organizations-epct-system-to-prepare

This means that PCT applicants in the U.S. can now file with RO/US while benefiting from the advantages of preparing their application using ePCT, provided that the necessary foreign filing license requirements have been met.2  The above‑mentioned article in the PCT Newsletter also outlines the main advantages of using ePCT, in particular, that it is a web‑based application and, unlike PCT‑SAFE, no cumbersome software installation and updates are required.  Also, as soon as RO/US transmits the application to the International Bureau (IB), it will be available in the “Workbench” of ePCT users who had access (or had been given access) to the application when it was prepared.

A wealth of information is available on the WIPO website to help users get started using ePCT.  For instance, in addition to the support documentation at:

https://pct.wipo.int/ePCTExternal/pages/landing.xhtml

user guides and step‑by‑step articles are available on the PCT eServices Help webpage at:

https://pct.wipo.int/pct/en/epct/pdf/pct_wipo_accounts_faq.html

Please note that the following pages are particularly relevant to you:

  • “Getting started”: https://www.wipo.int/pct/en/epct/learnmore.html?N=588
  • “Filing an application”: https://www.wipo.int/pct/en/epct/learnmore.html?N=196 and in particular, “Filing at RO/US using ePCT in combination with EFS-Web”: https://www.wipo.int/pct/en/epct/learnmore.html?N=452
  • “eOwnership, eHandshakes and Access Rights”: https://www.wipo.int/pct/en/epct/learnmore.html?N=693

Please note that an ePCT demo system has been set up to enable filers to familiarize themselves with the system before filing a “real” application.

Upon request, WIPO can provide online training sessions for companies.  These sessions can be tailored to their specific needs and can correspond to the participants’ level of PCT knowledge.  For users who are starting out with ePCT, training might include the following:

  • creation of a WIPO Account with strong authentication;
  • creating eHandshakes, assigning access rights, default filing settings;
  • navigating the ePCT Workbench;
  • creating and filing a new IA; and
  • managing filed IAs.

More advanced training sessions are also available for users who are already familiar with basic ePCT functionality and who would like to learn more about how the broad suite of functions available in ePCT can result in greater efficiency when managing PCT applications. 

For further information on requesting customized PCT training in general, please refer to the Practical Advice published in PCT Newsletter No. 10/2018 at:

https://www.wipo.int/edocs/pctndocs/en/2018/pct_news_2018_10.pdf

and for further information specifically on ePCT training possibilities please send an e‑mail to:  pct.eservices@wipo.int

You can also check the PCT Seminar Calendar for ePCT‑related seminars and webinars at: 

https://www.wipo.int/pct/en/seminar/seminar.pdf

Please note that the majority of receiving Offices have already stopped accepting PCT‑SAFE filings, and the IB as receiving Office (RO/IB) also intends to do this in the near future, at a date yet to be announced.  Therefore, any remaining PCT-SAFE users are strongly encouraged to start using ePCT where it is available at the receiving Office(s) they use to file international applications.  The current list of ROs that accept international applications filed using ePCT can be found at:

https://pct.wipo.int/ePCTExternal/pages/EFilingServers.xhtml

It is recalled that nationals and/or residents of any PCT Contracting State may file a PCT application using ePCT if they file with RO/IB, provided that any applicable national security requirements have been met.

  1. It is recalled that the former foreign filing license rules already authorized the export of technical data via ePCT for the purposes of preparing an international application for filing in a foreign PCT receiving Office (for example, the International Bureau as receiving Office).  However, those rules did not authorize the export of technical data via ePCT for the purposes of preparing an international application for filing with RO/US.
  2. If you have not yet obtained a foreign filing license at the time of preparing your request form and abstract in ePCT and generating your .zip file for upload to RO/US, and you have concerns about the export of technical information into ePCT in the form of the abstract and/or title of invention, you may wish to omit the abstract and/or title from the contents of the ePCT-Filing data package at this stage.  This is also recommended if you do have a foreign filing license but your application contains additional subject matter that might go beyond the scope of the license.