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PCT Newsletter 05/2008: 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.

The transmittal of notifications to applicants by e‑mail 

Q:      I am going to file a number of international applications on behalf of several applicants in the next few months. Later in the year, I will have to spend a few months away on business, and am worried about whether being away from my office will hinder my ability to properly follow-up the progress of the applications concerned. Is there any way that I can request that correspondence relating to the international application be sent to my e‑mail address, and that I can deal with any follow-up matters by e‑mail?

 A:      Until now, it has not been possible for the International Bureau (IB) to use e‑mail as a form of communication in respect of specific international applications.

However, as of 1 July 2008, the request form (PCT/RO/101) will contain a new field in Boxes Nos. II and IV that will allow applicants or agents to include an e‑mail address with their international applications. Next to that field will be a check-box, which, if marked, will authorize any PCT Authority (the receiving Office (RO), the IB, the International Searching Authority (ISA) and the International Preliminary Examining Authority (IPEA)) to send by e‑mail, if they so wish, advance copies of notifications in respect of the international application to the applicant or agent. This authorization will also be added to the request form which is completed when using the PCT-SAFE software. Upon receipt of such an authorization, the IB would be in a position to send you such advance copies of any notifications or invitations by e‑mail. Whether other PCT Authorities will also do so will depend on the PCT Authority concerned. The IB will notify PCT users which Authorities have announced their willingness to participate in this form of advance communication, to the extent that it is informed of this.

Note that if the checkbox referred to above is not marked, or the applicant or agent’s express authorization is not given in some other way, for example, in a separate letter, the e‑mail address can only be used for communications for which telephones or fax would otherwise have been used (for example, rapid informal communications with applicants (see PCT Rule 4.4(c), third sentence).

Such advance e‑mail communications will not replace paper notifications sent by mail as usual, which will remain the legal copy of the notifications. The e‑mail communication will be an additional service to the applicant, which will, in effect, serve as an advance warning of any possible action to be taken, and will help to reduce the effects of delays in the dispatching and delivery of the paper notification to the recipient. It may also give the applicant extra time in view of the fact that the time limit given for responding to an invitation is calculated from the date of mailing of the paper version of the communication.

The IB is planning to send such advance communications only to a single e‑mail address (per international application). This means that, where the e‑mail authorization is given in respect of both an applicant and an agent, the IB will send e‑mail communications only to the appointed agent (or common representative where no agent has been appointed). The recipient of the e‑mail will be responsible for forwarding the contents of that e‑mail to any other person who may need to receive it.

It is very important to note that, for the moment, it will not be possible for you, as agent (or the applicant) to reply by e‑mail to the IB, and any such e‑mail received by the IB would not be accepted by it. For the time being, you will be obliged to continue to reply by mail, or where accepted by the Authority concerned, by fax. Information on the forms of telecommunication, if any, by which PCT Offices and Authorities are prepared to receive documents, is published in the PCT Applicants Guide, Annex B (General Information) at:


Please also note that, for technical reasons, the IB will begin by only sending certain forms by advance e‑mail. Some of the forms which you can expect to receive in this way initially are: Forms PCT/IB/301, PCT/IB/306, PCT/IB/307 and PCT/IB/345. Progressively, additional forms will be added towards the end of the year, for example, Forms PCT/IB/304, PCT/IB/308 and PCT/IB/311.

For any international applications filed before 1 July 2008, it will be possible, on or after 1 July 2008 only, to submit to the IB an e‑mail address for that application, together with an express authorization for the RO, the ISA, the IB and IPEA to use the e-mail address to send advance copies of notifications in respect of the international application. The addition of the e‑mail address can be requested under PCT Rule 92bis (recording of changes in certain indications in the request or the demand). If the e‑mail address is to be registered for multiple cases, you may wish to send a single letter to the IB listing each international application concerned, noting that a separate letter should be written for each appointed agent (unless a group of agents has been appointed together). Similarly, if you wish later to change the e‑mail address already given in the request form, it will be possible to do this by requesting the IB to record a change under PCT Rule 92bis. For further information on requesting the recording of a change under PCT Rule 92bis, see the PCT Applicant’s Guide, paragraphs 427 to 431 (www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf), and the “Practical Advice” in PCT Newsletter Nos. 05/2002, 08/2002, and 07/2005 (www.wipo.int/pct/en/newslett/year.jsp).

This new advance notification service is, in effect, a precursor to a new system that WIPO is in the process of developing whereby PCT applicants will be able to securely log in to a private file inspection system, which will allow them to inspect the file of their international application and obtain correspondence in this way, prompted by an e-mail notifying them that such correspondence has been issued. Further information on this private file inspection system will be given later, when it is at a more advanced stage of its development.