| PCT, International Applications |
Referenced Items (371, 372, 373, 374, 375, 376, 377, 378, 379, 380, 381, 382, 383, 384, 385, 386, 387, 388, 389, 390, 391, 392, 393, 394, 395, 396, 397, 398, 399, 400, 401, 402, 403, 404, 405) |
(373) DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2015-0064]
Use of WIPO's ePCT System for Preparing the PCT Request
for Filing as Part of an International Application With
the USPTO as Receiving Office
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office (Office or USPTO),
in its capacity as a PCT Receiving Office (RO/US), will begin to accept
international applications under the Patent Cooperation Treaty (PCT) that
are filed electronically with a PCT Request prepared in the World
Intellectual Property Organization's (WIPO) ePCT system. ePCT allows users
to generate a zip file containing a validated PCT Request; the zip file can
then be submitted electronically to the RO/US as part of an international
application filed using the USPTO's electronic filing system (EFS-Web).
Because WIPO's ePCT system is web-based and the servers that support the
system are located outside the United States, users of ePCT are reminded
that the export of subject matter abroad pursuant to a foreign filing
license from the USPTO is limited to purposes related to the filing of
foreign applications, which include international applications filed in a
Receiving Office other than the RO/US. A foreign filing license does not
authorize the export of subject matter into ePCT for generating a PCT
Request for filing with the RO/US. Persons who are considering the use of
WIPO's ePCT system for preparation of the PCT Request for filing as part of
an international application with the RO/US should consider contacting the
Bureau of Industry and Security (BIS) at the Department of Commerce, the
Directorate of Defense Trade Controls (DDTC) at the Department of State, or
the National Nuclear Security Administration (NNSA) at the Department of
Energy for the appropriate clearances where the international application
may include technology subject to export controls.
DATES: The change in this notice takes effect on June 1, 2016.
FOR FURTHER INFORMATION CONTACT: Michael Neas, Deputy Director (telephone
(571) 272-3289; electronic mail message (michael.neas@uspto.gov)),
International Patent Legal Administration, Office of International Patent
Cooperation.
SUPPLEMENTARY INFORMATION: The USPTO's electronic filing system (EFS-Web)
enables users to electronically file international applications under the
PCT with the RO/US. EFS-Web currently permits users to submit the PCT
Request by uploading a zip file created using PCT Secure Applications Filed
Electronically (PCT-SAFE) software which is made available and maintained
by WIPO. The zip file from PCT-SAFE contains a validated PCT Request and
fee calculation sheet in PDF format, which are subsequently loaded in the
USPTO's Image File Wrapper (IFW). The zip file contains additional files
that, among other things, allow the USPTO and WIPO to auto-load application
bibliographic data. All other documents and application parts must be
prepared and loaded separately in EFS-Web for filing of the international
application. Submission of the zip file from PCT-SAFE at the time of filing
the international application entitles the applicant to a reduction of the
international filing fee. Starting on June 1, 2016, in addition to
accepting the zip files generated by PCT-SAFE, the RO/US will also begin to
accept international applications filed electronically with zip files
created by WIPO's ePCT system. ePCT is a web-based service that provides
for electronic filing of international applications with certain PCT
Receiving Offices. ePCT also provides for secure electronic access, file
management, and document submissions for international applications held by
the International Bureau (IB). The use of ePCT in this manner requires the
use of a WIPO user account authenticated with a WIPO digital certificate.
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US PATENT AND TRADEMARK OFFICE |
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ePCT is accessed via an internet browser on the user's system, and all
information input into ePCT is stored securely on WIPO's servers. Detailed
information on ePCT-Filing can be found at http://www.wipo.int/export/
sites/www/pct/en/epct/pdf/epct_filing_guidelines.pdf.
Both PCT-SAFE and ePCT include validation features to help users
properly complete the PCT Request. Since the PCT-SAFE validation can only
be made against the version of the software installed on the user's system,
the most up-to-date version of PCT-SAFE is required in order to ensure
accurate validation. In contrast to PCT-SAFE, validation in the ePCT system
is made in real time and does not require software updates. Furthermore,
like PCT-SAFE, the zip file generated by ePCT, which contains a PCT Request
in character coded format, also entitles the applicant to the same
reduction in international filing fees as indicated in item 4(b) of the PCT
Schedule of Fees (http://www.wipo.int/pct/en/texts/rules/rtax.htm#_S). The
use of the ePCT zip file would still require all other documents and
application parts to be prepared and loaded separately in EFS-Web for
filing of the international application.
By using ePCT, an international application will be associated with
the user's ePCT account, even before the application is filed, thereby
allowing users to share access rights with others prior to filing, if
needed. In addition, after the record copy is received by the IB, the
application file may be viewed online via ePCT without the need to
separately request access rights.
Applicants who are residents and/or nationals of the United States and
its territories can file international applications directly with the
Receiving Office of the IB via ePCT or other means, provided that any
national security provisions have been met prior to filing, including
obtaining any required foreign filing license. See 37 CFR 5.11 and
MPEP § 140. A foreign filing license does not, however, authorize the use
of ePCT to prepare the PCT Request and resultant zip file for filing, as
part of an international application, with the RO/US. See 37 CFR 5.15
regarding the scope of a foreign filing license. Also see Scope of Foreign
Filing Licenses, 73 FR 42781 (July 23, 2008) ("A foreign filing license
from the USPTO does not authorize the exporting of subject matter abroad
for the preparation of patent applications to be filed in the United
States."). Using ePCT to create a PCT Request and resulting zip file for
later submission to the RO/US does not constitute the "filing of an
application in a foreign country or to any foreign patent agency or
international patent agency" as provided in 37 CFR 5.15(a). Furthermore, an
international application filed in the RO/US is not a "foreign application"
within the meaning of 37 CFR 5.15(a) or 5.11(b), which authorize the export
of subject matter abroad. See 37 CFR 5.1(b)(2). See also 35 U.S.C. 368(b)
("In accordance with article 27(8) of the treaty, the filing of an
international application in a country other than the United States on the
invention made in this country shall be considered to constitute the filing
of an application in a foreign country within the meaning of chapter 17,
whether or not the United States is designated in that international
application.").
As set forth above, a foreign filing license does not authorize the
export of technical data into ePCT for generating a PCT Request and
resulting zip file for filing as part of an international application with
the RO/US. More specifically, to complete the PCT Request and generate the
zip file, ePCT requires a title of the invention, which may contain
technical data. Moreover, although an abstract is not required for creation
of the zip file, ePCT allows users to optionally provide the contents of
the application abstract, which may also contain technical data relating to
the invention. Since this technical data is stored on servers located
outside of the United States, users of ePCT are reminded that the export of
this subject matter abroad for the purpose of filing an international
application with the RO/US may require the appropriate clearances from the
Bureau of Industry and Security (BIS) at the Department of Commerce (See
Scope of Foreign Filing Licenses, supra), the Directorate of Defense Trade
Controls (DDTC) at the Department of State, or the National Nuclear
Security Administration (NNSA) at the Department of Energy.
An ePCT demo system has been set up to enable filers to familiarize
themselves with the system. For further information and to get started, go
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US PATENT AND TRADEMARK OFFICE |
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to the ePCT Portal at: https://pct.wipo.int/ePCT. To begin use of ePCT, a
user is first required to obtain a WIPO account
(https://pct.wipo.int/wipoaccounts/en/ePCT/public/register.jsf) and
subsequently associate a WIPO digital certificate with the account
(https://pct.wipo.int/wipoaccounts/en/ePCT/private/certificates.jsf--
requires login). Users without a WIPO digital certificate can obtain one
from https://pct.wipo.int/CertRequest/Verisign/services/
WorldIntellectualPropertyOrganizationWIPOCustomerCAV2/client/
userEnrollMS.htm.
May 2, 2016 MICHELLE K. LEE
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1427 OG 121]