PCT Newsletter 05/2017: 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.

Filing and managing international applications in ePCT – in particular by a person who is not an authorized signatory

Q: An international application will be filed for a corporate applicant who is based in Australia (with AU residence and nationality). I am a patent attorney based in Singapore, where the company has a subsidiary, the inventors are located in various other countries, and we intend to file the application with the International Bureau as receiving Office (RO/IB). As I am not entitled to act as agent before the Australian Patent Office and consequently, in accordance with PCT Rule 83.1bis, may not act for the applicant as an agent before RO/IB, I will have to indicate myself as an “address for correspondence”.

As announced in the last issue of the PCT Newsletter, ePCT has been redesigned and offers additional functions. Could you please advise how we could best use it, bearing in mind that we have doubts about the novelty of the invention and may decide to withdraw the application to prevent publication if the search results are negative?

A: It is recalled that RO/IB does not require the applicant to appoint an agent to act before it. An address for correspondence can be anywhere, and does not have to be linked to the nationality or residence of the applicants. If you are included as an address for correspondence under PCT Rule 4.4(d), you will receive all correspondence that would otherwise be sent to the applicant or agent regarding the international application during the international phase. However, as distinct from an agent, you cannot sign on behalf of the applicant, and any submission during the international phase would have to be signed by the applicant.

To file an application via ePCT, unless you have already done so, the first step is to create a WIPO account which allows you to sign in to WIPO’s online services by way of a username and password. However, in order to use ePCT functions that involve access to confidential data, including creating and filing new international applications, you also need to set up at least one strong authentication method for your WIPO account. This means that when you sign in to ePCT with your username and password, an additional identification step is required in order to verify your identity. Traditionally, this two-factor authentication was achieved using a digital certificate or smartcard installed in your internet browser and uploaded to your WIPO account. However, since the redesign of ePCT, and as a more efficient alternative to digital certificates, you may now use a one-time password as an additional strong authentication method. A simple set-up process allows you to synchronize your WIPO account with an app installed on a mobile device that generates one-time passwords (for example, Google Authenticator) and you can also register your mobile phone number in order to receive one-time passwords via text message (SMS).

Please note that each WIPO account should be used by only one person – the account holder. The sign-in details must be kept secure and should not be shared. Any other persons needing to access the international application should each create their own separate account and set up their own strong authentication methods.

When you sign in to ePCT with two-factor strong authentication, the default landing page is the “Workbench” from where you can prepare the new application “New IA”. As you enter bibliographic data and attach documents in ePCT, validations are made in real time against the live database at the IB, which always contains the most up-to-date reference data.

Typically, several persons in a patent department or law firm will need full access to international applications to perform certain tasks, depending on internal work distribution and in case of absences. When you create a new international application you are automatically attributed access to the application at the level of ‘eOwner’, meaning that you can subsequently assign access rights to other WIPO account holders, including before filing. Please note that if you delegate access to another person, you are responsible for ensuring that the person is, and continues to be, entitled to view and/or manage the relevant confidential data.

Access rights to international applications can be at one of three levels: full access (eOwner), eEditor and eViewer (details can be found in support material).

When entering your name and address, you should select the option “Address for correspondence” and not agent. When you have completed all the relevant data and attached the necessary documents, you can save a draft version of the new international application and assign full access to the applicant, that is, to an authorized officer of the corporate applicant in Australia, who may then review the draft application data in real time and sign it. The signature may be a text string (alphanumeric) signature or an image (facsimile) signature may be attached – there is a mandatory field in the signature section for indicating the full name and the capacity within the company of the authorized signatory.

As indicated above, even though you are eOwner and hence have full access to the application in ePCT, in your capacity as address for correspondence (as distinct from an agent), you are not authorized to sign the application. Only the applicant (an authorized Officer of the corporate applicant) may sign, and your name should not be indicated in the signature section. In ePCT, only the names of applicants and authorized agents can be selected from the dropdown list of names appearing in the signature box.

Similarly, if a declaration of inventorship under Rule 4.17(iv) is prepared using ePCT, you may assign eEditor access to the co-inventors so that they can access the draft declaration and sign it, making it easier to obtain the signatures of persons located in different countries and time zones. Once the applicant and inventors have applied their signatures, you have the option of downgrading their access to eViewer only or removing it altogether.

Since you are planning to file the international application with RO/IB, you have the advantage of being able to pay the filing fees online at the time of filing by indicating the payment method as either “credit card” or “WIPO current account”. Alternatively, it is of course possible to sign in to ePCT after filing, and pay the fees online using the “Online Payment” action (please see below for further information on actions).

After filing the application, it will be important to closely monitor the receipt of the international search results and evaluate them in time to decide whether or not to withdraw the application to prevent publication. It is recalled that in order to prevent international publication, the application must be withdrawn before the completion of technical preparations for publication, which is usually 15 calendar days before the actual publication date.

Via ePCT you can view and monitor the scheduled publication date (which could still be subject to change) and, by default, you will be reminded by way of an e-mail notification two weeks before the completion of technical preparations for publication. You will also be notified each time the IB has processed a new document for the application, including the international search report and written opinion. As eOwner, you, and any person with eEditor or eViewer access, may consult those documents online in the ePCT file – in some cases this might be possible even before the original copies are received from the ISA by traditional means.

If you decide to withdraw the application, it is highly recommended to do so using the online ‘Action’ in ePCT since an ‘Action’ item is automatically categorized which simplifies identification and processing at the IB. When you open the application you will see a section called ‘Actions’ that enables you to prepare and submit a range of online actions as an alternative to drafting and uploading letters. The bibliographic data on file at the IB is auto-filled for each ‘Action’, thus saving time and avoiding errors.

As mentioned above, in order to satisfy signature requirements, you can save a draft of the action ‘Withdraw International Application’ and re-assign full access to the authorized signatory of the applicant in Australia (in the case where previous access had been removed or downgraded to eViewer only) so that they can sign. After submitting the action, the rendered documents are displayed in the ‘Documents’ section making up the record as held by the IB and are immediately available in the IB’s electronic processing system. It is useful to note that, as soon as an ‘Action’ to withdraw an international application is submitted online via ePCT before the completion of technical preparations, the international application cannot be published as long as the IB has not processed the request. By way of an important comparison, if you send a notice of withdrawal by either mail or fax, there is a risk that the application might be published while the notice is pending receipt, scanning and processing.

For more information, ePCT support material and frequently asked questions are available via the “Support” link on the PCT home page at:

https://pct.wipo.int

For further information about assigning and managing access in ePCT, see the “Practical Advice” published in the following issues of the PCT Newsletter:

No. 06/2016: Requests for recording of changes under PCT Rule 92bis using ePCT: situations where access to the international application will be suspended, and the extent to which access will be blocked

No. 11/2015: Assignment by the agent of eViewer rights to the applicant when preparing and filing international applications using ePCT-Filing

No. 04/2012: Changing access rights in ePCT when there is a change of agent