PCT Newsletter 04/2020: Practical Advice

WARNING: Although the information which follows was correct at the time of publication, 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.

Alternatives to paper transmittal and receipt of PCT-related documents

Q: I have up until now only filed PCT applications on paper with the International Bureau as receiving Office (RO/IB), or with my national receiving Office using an electronic filing system that does not require an e‑mail address to be provided.  I have received PCT‑related correspondence on paper by postal mail only and have never included my e‑mail address on the request form.  Given that the IB has announced that it has suspended all communication by postal mail until further notice, what are the options for sending and receiving documents relating to my current applications electronically in a secure manner?

A: Due to the effects of the current COVID-19 pandemic on the operations of the IB and on postal systems worldwide, applicants (or their agents) are strongly discouraged from sending PCT‑related documents by postal mail since their delivery cannot be guaranteed at this time. Similarly, the IB itself (including in its role as receiving Office) will no longer transmit PCT‑related documents by postal mail and so you are advised to communicate with the IB exclusively by appropriate electronic means.

In order to continue to receive PCT notifications from the IB, you must take urgent steps to provide the IB with an e-mail address to which outgoing notifications can be sent in respect of your pending international applications.  The information that follows explains the different measures that you can take to do this.

Upload a document to the IB using ePCT

If you have not already done so, you should create a WIPO account so that you can log in to WIPO’s ePCT system and upload documents to the IB in electronic form.  For further details, please refer to:

www.wipo.int/pct/en/epct/learnmore.html?N=690 and

www.wipo.int/pct/en/epct/learnmore.html?N=820

You should then upload a single letter for one of your pending international applications, requesting the recording under PCT Rule 92bis of an e-mail address for sending PCT notifications and include a list of all the other applications to which this change should also apply.  Please select the document type “Request Change under PCT Rule 92bis for multiple applications”.

Use the Contingency Upload Service

If you have not yet created a WIPO Account in order to log in to the ePCT system, or are not in a position to do so immediately, you can nevertheless submit documents to the IB in electronic (PDF) format by using the Contingency Upload Service at:

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

As mentioned above for ePCT, when using the Contingency Upload Service you can similarly upload a single letter for one of your pending international applications that includes a list of all the other applications to which the recording of the e-mail address should also apply.  Note that, while the Contingency Upload Service provides a practical electronic alternative to sending paper documents, it is intended rather as a back-up service only in the unlikely event that the ePCT system is not available.  The use of the Contingency Upload Service does not provide the facilities of ePCT and is therefore not considered best practice.  

If you encounter difficulties with either of the above methods for communicating your e‑mail address to the IB, given the urgency of the situation you can also:

  • send an email to one of the following addresses: pct.eservices@wipo.int or pct.infoline@wipo.int; or
  • use the WIPO (PCT) customer “Contact Us” page at: 

          https://www3.wipo.int/contact/en/area.jsp?area=pct

If you are planning to file any new international applications in the future, you are strongly advised to ensure that you include your e-mail address in the request form, and check the box to authorize the IB, receiving Office and International Searching and Preliminary Examining Authority to send notifications issued in respect of the international application to that e‑mail address if those offices are willing to do so (Box No. IV of the request form). 

However, the best practice would be to file your international application using ePCT‑Filing when filing with RO/IB, or with any other competent participating receiving Office1, so that your application is received immediately by the Office concerned, and will not be subject to any delay due to problems with the postal service.  It is recalled that if an applicant’s national or regional receiving Office does not accept ePCT‑filings, any applicant can file with the RO/IB, which is a competent receiving Office for any resident or national of a PCT Contracting State (PCT Rule 19.1(a)(iii)), subject to any national security issues.  ePCT‑Filing does not require the download of any software, and contains a large number of built‑in validations based on the most up‑to‑date reference data held by the IB that will help you avoid making errors when filing the international application or in post filing actions.  Alternatively, you could also use any other electronic filing method accepted by your competent receiving Office.  For further information on filing international applications using ePCT‑Filing, please refer to the ePCT Help page at: 

www.wipo.int/pct/en/epct/learnmore.html?N=169

In addition to e‑mail transmission of documents, PCT-related documents are also available through ePCT.  In order to access those documents, once an e‑mail address for the application has been recorded by the International Bureau2 you would need to set up strong authentication and request ePCT access rights (eOwnership) to your application. 

After international publication of the international application, notifications relating to the application are also available on PATENTSCOPE.

If you require assistance with any aspect of creating a WIPO account and starting to use ePCT, please contact the PCT eServices Help Desk at:  pct.eservices@wipo.int

In your own interest, you are also advised, whenever possible, to:

  • make use of WIPO’s Digital Access Service (DAS) as this enables you to furnish priority documents electronically in an easy way (as well as being free of charge) (for further information, please refer to PCT Newsletter Nos. 11 and 12/2019);
  • obtain electronic signatures rather than hand-written signatures (one of the advantages of using ePCT is that it enables you to obtain signatures electronically using the external signature function, which could be very useful if you are not in direct contact with someone whose signature you require – for further information, please refer to: www.wipo.int/pct/en/epct/learnmore.html?N=992); and
  • make payments electronically (it is recalled that WIPO only accepts fees paid by:  requests to debit a WIPO Current Account, credit card (under certain circumstances), bank transfer or (within Europe only) postal transfer);

For further information on receiving notifications from the IB, please refer to “Electronic communication methods with the International Bureau” at:

www.wipo.int/pct/en/covid_19/communication.html

Note that the IB is also recommending that PCT national and regional Offices, including International Authorities under the PCT, use electronic means for communication with the IB, such as ePCT or Electronic Data Interchange (EDI), whenever possible. 

It is recalled that the “Practical Advice” in the March 2020 issue of the PCT Newsletter (No. 03/2020) dealt with possible remedies where time limits under the PCT have been missed due to unforeseen events (in the specific example, due to the effects of the current COVID‑19 pandemic).

1. The list of participating Offices can be found at:  https://pct.wipo.int/ePCTExternal/pages/EFilingServers.xhtml

2. Requesting eOwnership will in most cases require a confirmation code to be sent via Form PCT/IB/345, and therefore it is necessary for an e-mail address to have already been recorded for the sending of notifications by e-mail.