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.

Advantages of filing PCT applications in XML format

Q: I normally prepare the description, claims and drawings of new PCT applications using MS-Word and then convert the document into PDF format for filing. I have noticed that document converters are available in ePCT to convert from DOCX to XML format. What is the advantage of doing this?

A: PCT applications can be filed using ePCT in either PDF or XML format. Applicants or attorneys can use MS-Word or other word processing software to prepare the application, save the application in DOCX format and then convert the application to PDF or XML format. However, applicants benefit from greater fee reductions if the description, claims and abstract are provided in XML because that portion of the application will be in a text-based format. The fee reductions (indicated next to each receiving Office listed in Table I(a) of the PCT Fee Tables) encourage XML submission so that the International Bureau (IB) can produce a digitized record of all patent applications, enhance the presentation and accurate publication of PCT applications and create a machine-readable data-base for full-text computer search.

Furthermore, with an XML application, there is a lower risk of formalities defects since most of the layout rules are handled by the stylesheet from which the publication view is prepared.

PDF documents can be either text-based or image-based. Scanning your Word document to produce a PDF results in an image-based PDF that is not compliant with Annex F of the Administrative Instructions under the PCT.

To assist applicants, WIPO has developed online tools for document conversion and validation that are integrated into ePCT. Standalone versions of these tools are also available at:

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

In particular, the standalone tool for the conversion of documents from DOCX to XML format, namely the "Application Body Converter", is available at:

https://pct.wipo.int/DocConverter/pages/home.xhtml

On the above-mentioned web page, use the "Upload and Convert" button to upload your DOCX document and the system will transform it into an Annex F application body XML format. The outcome will include:

  • the application body XML file (including images);
  • the application body in PDF format (generated from the XML);
  • the application body HTML file (including images);
  • a clean DOCX file (document with unrecognized content removed) - this clean DOCX can be used in your editor to compare the recognized content with the original, revise the document as needed and upload it again if required; and
  • a conversion report.

You can view and check the XML document converted from your DOCX file, as presented by ePCT during upload.

Samples and templates of the application body are available in the 10 PCT publication languages, which can all be easily found in the Document section in ePCT when you prepare an application, and also on the following web pages:

https://pct.wipo.int/DocConverter/pages/sampleFiles.xhtml

https://pct.wipo.int/DocConverter/pages/templateFiles.xhtml

You may also refer to a concise User Guide and our recorded webinar on DOCX (available in English only).

Considering the acknowledged risk of unintentional modifications of data during document conversion, Section 706 of the Administrative Instructions under the PCT explicitly allows the submission of a "pre-conversion" document at the time of filing where this is permitted by the receiving Office. This provides an opportunity to rectify inadvertent changes to align the filed international application with the content of the pre-conversion document.

Please note that for DOCX filings, the original DOCX version is considered automatically as the pre-conversion document. It is therefore not necessary to attach it as a pre-conversion file.

The submission of international applications in text-based format also has many advantages over filing on paper, which is strongly discouraged. PCT applications submitted in paper format are scanned into PDF and the bibliographic data is input manually. Such applications, together with image-based PDF application, then have to be converted into a machine-readable format. The IB uses an Optical Character Recognition (OCR) service to extract and repurpose the images of typed, handwritten or printed text from scanned documents into machine-encoded text. However, the OCR has some technical limitations and may not always achieve 100% accuracy, especially when dealing with complex or handwritten fonts. This may, therefore, result in misinterpretation and potential inaccuracies.

Submitting PCT application documents in XML format such as through conversion from a DOCX file is thus highly recommended. Applicants stand to gain from both fee reductions and technical advantages.