PCT Newsletter 12/2013: 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.

Indicating a particular applicant for a new PCT Contracting State which is not yet included in e-filing software

Q: I have noticed that the PCT-SAFE e-filing software is updated several times a year, and presume that, if a new Contracting State becomes bound by the PCT between the time of the release of an e-filing software version and the filing of an international application, the new State will be automatically designated. However, in such a situation, if there are two or more applicants, and each applicant is to be indicated as applicant for specific PCT Contracting States, the corresponding screen (“Details Concerning Applicant or Applicant/Inventor”), where check boxes should be marked to show which Contracting States each person is applicant for, would not include that new State. If I wanted to indicate a particular applicant for a new PCT Contracting State which is not yet indicated in the corresponding list of States, how would I do this?

A: This answer applies to other PCT e-filing software, such as eOLF and JPO-PAS, as well as to PCT-SAFE. First of all, if the software has not yet been updated by the time a State becomes bound by the PCT, or if the applicant is unable for some reason to use the most up-to-date software, even though a new PCT Contracting State is not indicated in the software, it will nevertheless be automatically designated in international applications filed on or after the date on which the State becomes bound by the PCT. Furthermore, even though you will not see that State listed on the corresponding print out of the PCT-SAFE request form, you will see it in the list of designated Offices included in Form PCT/IB/301 (Notification of receipt of record copy) which will be sent to you by the International Bureau (IB).

In order to indicate that a person should be considered as an applicant for a new PCT Contracting State which is not yet included in the latest version of the e filing software, or which is not included in the particular version of the software that you have installed, you can, at the time of filing, attach, as an accompanying item, a PDF document containing this information. This is done in the following way:

– From the Contents>Accompanying Items tab, select “Other” from the pull-down menu and type a meaningful name, such as “Indication of applicants for specific designated States”;

– Click on “Add”;

– Select the newly created row in the accompanying items table, open and attach the PDF document (for EFS-Web filing, indicate that the file is “enclosed”).

In fact, the “Other” option under “Accompanying items” can be used to add any other items or information which are not already listed there, and cannot be added or indicated elsewhere in the software, such as the indication of a parent application when there is more than one parent application in the case of a continuation or a continuation-in-part.

Where there are two or more applicants and it is not obvious which applicant is to be considered as applicant for a PCT Contracting State which is not yet included in the e-filing software, and you have not attached this information to the application, the receiving Office or the IB will request clarification from the applicant. Such clarification would also be requested even if the applicant has up-to-date software which includes a new State, but where the applicant has omitted to indicate an applicant for that designation.

Note that when filing under the ePCT-Filing pilot with the IB as receiving Office, the fully online system is updated on the date on which a State becomes bound by the PCT, and so it is less likely that information would be missing regarding the applicant for a specific designated State.

When filing using the paper request form (PCT/RO/101), the applicant would check the box under Box No. II or III marked “the States indicated in the Supplemental Box” and then repeat, next to part 1(ii) of the Supplemental box, the name of the applicant together with an indication of the designated State for which that person is an applicant.

It is recommended that users of PCT e-filing software always use the most up-to-date version of the software. If you have any specific questions about the filing of an international application using the PCT-SAFE software, please contact the PCT eServices Help Desk at:

E mail:             epct@wipo.int

Telephone:     (+41-22) 338 95 23