Notice to Users of PCT-SAFE and the EPO Online Filing Software
It is recalled that as from 1 July 2008, the PCT provides for:
- the possibility for applicants to request the International Searching Authority (ISA), when carrying out the international search, to take into consideration the results not only of an earlier search it has carried out, but also an earlier search carried out by another ISA or a national or regional Office;
- the possibility for applicants to authorize the various PCT Offices and Authorities, if the Office or Authority concerned so wishes, to send advance copies of notifications to the e-mail address provided by the applicant for this purpose (for further information, see the "Practical advice" in PCT Newsletter No. 05/2008); and
- the possibility, for international applications filed in fully electronic form, of submitting the application documents also in the pre-conversion format, as a safeguard against conversion errors, together with the corresponding statement on the request form, following the amendment of Section 706 of the PCT Administrative Instructions (for further information, see PCT Newsletter No. 05/2008, page 2).
Please note, however, that certain users of PCT-SAFE and all users of EPO Online Filing Software will have to rely on a “work-around” to take advantage of these new features in the PCT until the software packages concerned have been fully updated.
For any other online filing software, for instance the JPO PAS electronic filing software, applicants should refer to the relevant receiving Office for clarification about how to address these issues.
Moreover, not all of the above described features might in fact be available with all PCT Authorities. Applicants are therefore advised to check with the Authorities concerned as to their availability.
PCT-SAFE users affected
Due to some delays in the implementation of the July 2008 Rule changes, it has not yet been possible to make the technical modifications required for the acceptance of the 1 July 2008 request form on the receiving Office server at the following receiving Offices: AU, CN, DE, DK, EP, ES, FI, GB, JP (fully electronic filings only), KR, MY, NL, PH, PL, RO, SE and SK. This means that the PCT-SAFE client (version 3.51.029.204 - 01 July 2008) will not produce the July 2008 request form - neither for PCT-EASY type filings nor for fully electronic filings - if one of these receiving Offices (ROs) is selected.
Consequently, applicants wishing to file international applications via the PCT-SAFE software (either fully electronically or in PCT-EASY mode) with the above–mentioned ROs should follow the recommendations below.
It should be noted that this issue does not affect the filing of international applications via the PCT-SAFE software (either fully electronic or in PCT-EASY mode) with any other RO, including the RO/IB. PCT-SAFE applications attached to EFS-Web filings with the USPTO are not affected by this issue either.
General recommendations to PCT-SAFE and EPO Online Filing Software users
(i) Earlier search results:
The request form produced by the existing versions of both software packages, already allows applicants to indicate if they wish the ISA to take into account an earlier search done by the same Office that is now acting as ISA. If, however, applicants wish to request the ISA to take into account the search results of another ISA or national or regional Office, they should prepare a document indicating the earlier search details - for instance, by completing the sheet of the July 2008 paper request form containing the "Continuation of Box No. VII" part (see www.wipo.int/pct/en/forms/index.htm) - and scan this document into PDF format and attach it to the fully electronically filed international application.
To attach the document, when creating the request form, under the "Contents" tab, applicants should click on "Accompanying items", then select "Other" in the pull down menu and under "
(ii) E-mail authorization:
A similar course of action is recommended for authorizing the sending of advance copies by e-mail. It should be noted, however, that the request form produced by the existing versions of both software packages, under the "Name" tab, already provides applicants with the possibility to indicate a single e-mail address both for the first named applicant and the agent of record or a common representative.
Therefore, in the interim, applicants will only have to authorize the use of the indicated e-mail address(es) for the purposes of receiving advance copies of notifications. In this respect, as described above, applicants should prepare a document reproducing the text of the e-mail authorization of the July 2008 paper request form (see the relevant text in Boxes Nos. II and IV). It should always be clearly stated for which e-mail address the authorization is provided. As described above, this document should then be attached to the international application.
Note that the recommendation under (i) and (ii), above, should be understood for the PCTEASY mode filings in the sense that, instead of scanning documents, a print-out of the relevant document can be included in the international application.
(iii) Attaching pre-conversion files to fully electronic international applications:
Both software packages already provide, in principle, for the possibility for applicants to attach the contents of the application in their original electronic document format (for example, MS-WORD).
When generating the request form, under the "Contents" tab, applicants should click on "Accompanying items", then select "Documents in pre-conversion format" in the pull-down menu and attach the related document(s).
The EPO Online Filing Software provides the same functionality under the "Contents" tab. The only difference being that the pre-conversion file is attached under "International Application"; this can only be done after a specification file has been attached.
In PCT-SAFE, before documents in pre-conversion format can be attached as described above, the following statement will have to be validated by applicants: "Statement (Section 706): This is a complete and accurate copy of the international application prior to its conversion into the electronic document format in which it is filed", and this statement will then appear on the request form.
Until the EPO Online Filing Software is updated to produce this statement, applicants using this software will need to attach a document containing such a statement following the procedure described under paragraphs (i) and (ii) above, except that applicants will have to draft their own statement since this feature does not exist in the paper version.
