PCT Newsletter 12/2017: 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.

Minimizing the risk of incorrect or unintended information in the published PCT application

Q:  How can I minimize the risk of incorrect or unintended bibliographic information appearing on the front page of a published PCT application?

A:  With only a small number of exceptions, the International Bureau (IB) publishes each PCT application pursuant to PCT Article 21 shortly after the expiration of 18 months from the priority date.  When preparing the front page of the published PCT application, the IB makes use of the bibliographic data provided earlier by the applicant in the request form.

One possible source of error in the published bibliographic data is the transcription of such data by an Office after the application has been filed, which happens if the applicant makes use of an image-based request form.  This offers a reminder of the benefit to the applicant of filing the PCT application in such a way that the bibliographic data are provided in character‑based form. If, for example, the PCT application is filed using an electronic filing system, for example ePCT‑Filing, then the applicant is able to provide the bibliographic data in character‑based form.  Note that, for an applicant filing in RO/US, the best practice is to create a .zip file containing character‑based bibliographic data, and to upload the .zip file into the EFS-Web system for filing (for further information, see PCT Newsletter No. 05/2016, page 5).

With any of these approaches, the desirable result is that the applicant has provided character‑based bibliographic information.  Such information does not therefore need to be transcribed by hand subsequently by an Office and will be communicated in an automatic way to the system employed by the IB to prepare the front page of the publication of the PCT application.

The ePCT system, however, offers a further opportunity to minimize the risk of incorrect or unintended bibliographic information appearing on the front page of a published PCT application, as will now be explained.

The applicant will preferably have taken steps during the filing of the PCT application to enable access to the application in ePCT. Or alternatively, upon receipt of Form PCT/IB/301 (Notification of Receipt of Record Copy), the applicant will have taken steps to obtain access to the PCT application in ePCT1.  In either case, the next step is to view the content of the application in ePCT, and then to click on the “Preview publication front page” link which is available in the “Data” section.  This permits the ePCT user to download and view a PDF copy of a preview of the front page of the PCT publication containing the bibliographic data.

The user can take this opportunity to proofread the preview, which facilitates the identification of any typographical errors made by Office staff (in the case where an image‑based request was filed) or even by the applicant when entering the bibliographic data using ePCT, PCT-SAFE or other e-filing software.  It will then be a straightforward matter to request the IB to correct the error by way of a request for the recording of a change under PCT Rule 92bis, preferably using the corresponding ePCT Action.

The user may also wish to pass the preview to the applicant or inventors for review. It might be the case, for example, that the inventors prefer a different order in the listing of the inventors on the front page of the publication.  Or such a review might trigger a realization that a priority claim is missing and needs to be added.  Any such problems, if detected early enough, can be readily corrected by appropriate and timely communication with the IB.

Carl Oppedahl, a practitioner located in the United States, recommends scrutiny of the publication review page in ePCT:  “In one case I discovered to my surprise that in PCT‑SAFE I had misspelled the name of the chief inventor.  Had I not checked the preview page, the application would have been published with the inventor's name spelled incorrectly.  Because I discovered my mistake shortly after filing, there was plenty of time to file a Rule 92bis request to correct the spelling.  The application was published with the inventor's name spelled correctly and I avoided embarrassment in front of my client.”

  1. It is recalled that, even if the applicant has not filed the international application electronically, provided that a WIPO account has been created and secured with a strong authentication option, the applicant can confirm eOwnership of the application and gain access to the, as yet, unpublished international application.  For further information, see https://pct.eservices.wipo.int/ and the “Practical Advice” in PCT Newsletter No. 03/2015, page 9.