Theme 3: Filing a PCT Application · PDF file... Filing a PCT Application Electronically ... – does accept the request form in character-coded XML ... obtain a digital certificate

Theme 3: Filing a PCT Application Electronically

• Using EFS-Web in RO/US • Using PCT-SAFE in RO/IB

PCT-SAFE (1)

• PCT-SAFE (Secure Applications Filed Electronically) is a software program available from WIPO that aids in the electronic filing process

• The PCT-SAFE system contains:• PCT-SAFE Client

– used to create the PCT request form, attach the application documents, digitally sign the application and filing package and, depending on the RO, transmit application

• PKI Services– industry-recognized digital signatures and security for electronic

data• PCT-SAFE receiving Server

– allows RO to receive electronically filed PCT applications and forward data to RO processing systems

PCT Seminar for SMEs and Independent Inventors - November 2009

PCT-SAFE (2)

• When “US” is selected as the receiving Office – the PCT-SAFE software can only be used in PCT-EASY mode to

prepare the request form as a character-coded XML document and save it as a “PCTEASY.zip” file

• When “IB” is selected as the receiving Office– the PCT-SAFE software can be used in fully electronic mode to

prepare the request form as a character-coded XML document, attach application documents (e.g. in PDF format), sign and securely transmit the application to the RO/IB

– the application documents may also be prepared in XML format using the PCT-SAFE or other means and attached to the request form generated using the PCT-SAFE Client

• PCT-SAFE software is available free of charge from WIPO

E-filing of international applications in the RO/US (1)

• Applicants may file international applications in the RO/US using EFS-Web

• EFS-Web is a patent application and document submission solution that uses standard web-based screens and prompts to enable submission of a PDF document directly to the USPTO

• Applicants will receive an acknowledgement receipt with the dateand time of the submission and critical data including the application number

• EFS-Web has been designed to integrate with the USPTO’s Private Patent Application Information Retrieval (PAIR) system

• Industry standard PDF files are required for submission to EFS-Web


E-filing of international applications in the RO/US (2)

• EFS-Web – does NOT accept the description or claims in XML format– does accept the request form in character-coded XML format

prepared using PCT-SAFE in PCT-EASY mode and submitted as part of the PCTEASY.zip file

• International applications may be filed by – registered users, that is, users that have a customer number and

digital certificate for secure communication with the USPTO or someone under the authority of the certificate holder; or

– unregistered users• International applications submitted by registered users via EFS-Web

are now immediately viewable in Private PAIR• Fees may be paid at the time of filing using a deposit account, electronic

funds transfer or credit card

How to become a register user

• Anyone can become a registered user by – obtaining a Customer Number to ensure that only you can

access the information on your applications prior to publication– and then obtaining a Digital Certificate, also known as a Public

Key Infrastructure (PKI) certificate, which is issued by the USPTO to registered patent attorneys, registered patent agents, independent inventors, and limited recognition practitioners

• Additional information is available at http://www.uspto.gov/patents/process/file/efs/guidance/index.jsp


The PCT request form for e-filing in the RO/US

• Applicants may prepare the PCT request using – PCT-SAFE in the PCT-EASY mode (for details, see

http://www.wipo.int/pctsafe/en/support/guides/pdf/us_e_easy_v3.pdf)or

– any means that creates a PDF version of the PCT request, for example,

• by scanning a paper copy of the request form• by completing an “editable” version of the request form

PCT-SAFE validation function (automatic formality check)

“Traffic lights” assist in completing the request form data:Red light: missing indications mandatory for according an international filing dateRed light with X: incomplete or erroneous indications also mandatory for according an international filing date or other obvious errorYellow light: missing indications, the omission of which could prompt further communication from the RO (for example, invitation to correct defects)Yellow light with !: incomplete or erroneous indications that could prompt further communication from the ROGreen light: no indication required but applicant should evaluate the needto make such an indicationGreen light with ?: a reminder questioning the need for indications or verificationGreen light with : the indications appear to be in order


Using PCT-SAFE to prepare a request form

PCT-SAFE File Manager

Open the PCT/RO/101 Request template to begin


Enter the language and file reference number

Request: choose RO and ISA; enter title of the invention

States: exclude designation of DE, JP, KR; indicate data where IA is to be treated as US continuation or continuation-in-part

Names: insert data for applicants, applicant/inventors, agents

Priority: insert priority application data

Biology: use where deposited biological material and inclusion of sequencelisting

PCT-SAFE Tabs

Declarations: enter data for declarations submitted as part of the request form

Contents: indicate number of sheet making up the IA; mark box for EFS-Web filing; calculate total sheets; indicate items accompanying the IA

Fees: software calculates total fees payable

Payment: indicate mode of payment

Annotate: contains the validation log with outstanding validation messages; submission data; remarks


Choose“US” from dropdownmenu

Using PCT-SAFE for EFS-Web filing in RO/US

Mark EFS-Web box in order to insert s-signatures and save the PCTEASY.zip file on user’s hard drivefor submission via EFS-Web

When “US” is indicated as the receiving Office, EFS-Web box appears under the Contents tab


Signing the PCT request and fee calculation sheet

• PCT-SAFE allows those applicants filing via EFS-Web to electronically sign the PCT request with an S-signature as provided by 37 CFR 1.4(d)(2) including– the signature box – the US declaration of inventorship sheet of the request and – fee calculation sheet

• The RO/US will issue an Invitation to Correct Defects if the PCTrequest is not signed

• Applicant may also “wet sign” a print out of the request and the fee calculation sheet and file each copy as a separate document

PCTEASY.zip File


UserAccesses USPTO

Portal

UserAccesses USPTO

Portal

UserAccesses USPTO

Portal

Access EFS-WebAs Unregistered

Filer

bAccess EFS-WebAs Unregistered

Filer

Access EFS-WebAs Unregistered

Filer

Authenticateas

RegisteredFiler

A th ti tAuthenticateas

RegisteredFiler

Authenticateas

RegisteredFiler

ChooseInternational Application

Filing


Filing


Filing

Attach PCT-EASY.ZIP File or

Form RO 101

YAttach PCT-EASY.ZIP File or

Form RO 101

Attach PCT-EASY.ZIP File or

Form RO 101

and

Review AttachedFiles



Calculate Fees(Optional)

sCalculate Fees(Optional)

Calculate Fees(Optional)

Submit and PayReceive PCT number

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immediately

EFS-Web PCT filing overview

specification (i.e., description),claims, abstract, and any drawingsas pdf files

Using PCT-SAFE in combination with EFS-Web for filing to RO/US

Prepare and sign request form

PCTEASY.zip

Save the request as PCTEASY.zipfile

Upload to EFS-Web


Resources on e-filing in the RO/US

• Applicants are advised to read the information on e-filing requirements posted on the USPTO’s Electronic Business Center home page at http://www.uspto.gov/ebc/indexebc.html

• Applicants can call the Electronic Business Center at the USPTO for technical assistance at (866) 217-9197 (toll-free) or (571) 272-4100 from 6 AM to Midnight, Eastern Time, Monday – Friday

Electronic filing in RO/IB

• Applicants may prepare the text (“single specification”) and drawings in PDF format and attach them to the request form, prepared using the PCT-SAFE Client in fully electronic mode

• Applicants may prepare the entire international application in XML format using PCT-SAFE software

• The application can be – electronically signed with a WIPO digital certificate– transmitted via secure Internet connection or on physical

medium


Using PCT-SAFE:obtain a digital certificate

Request for a digital certificate from a Certification Authority (CA) recognized by RO

CA(WIPO Customer CA or other recognized CA)

Digital certificate issued by the CA and stored on user’s computer

Digital certificate

010101010101010101010

Signature

Using PCT-SAFE: submit fully electronic application to RO/IB

+ Image file attachments (e.g. PDF, tiff)

orxml application body

document

ReceivingOffice

OR

010101010101010101010

Signature


Fee reductions for electronic filing

• International application filed electronically, the request not being in character coded format (in image format, for example PDF) CHF 100 = $89 (applicable in RO/US but not in RO/IB)

• International application filed electronically, the request being in character-coded formatCHF 200 = $178 (applicable in RO/US and RO/IB)

• International application filed electronically, the request, description, claims and abstract being in character-coded format (not applicable in RO/US but applicable in RO/IB)CHF 300 = $267

• Applicants who do not file electronically are entitled to CHF 100 = $89 reduction where the application is filed on paper and includes:– a paper printout of the request prepared using PCT-EASY and– the PCT-EASY request and abstract in character-coded format

on physical medium

How to obtain PCT-SAFE

• PCT-SAFE Client– download from the PCT-SAFE web site

http://www.wipo.int/pctsafe/en/download/download_client.htm– CD installation from PCT-SAFE Help Desk

• WIPO CA digital certificate– obtain through the PCT-SAFE web site

http://www.wipo.int/pct-safe/en/certificates.htm• Cost

– free of charge• Supporting Documentation

– user guides and e-tutorials available on web site and installation CDhttp://www.wipo.int/pct-safe/en/support/user_documentation.htm


PCT-SAFE tutorialhttp://www.wipo.int/pct-safe/en/support/elearning/pct_client/mainmenu.htm

Further information on PCT-SAFEPCT-SAFE Help DeskWorld Intellectual Property Organization34, chemin des ColombettesCH-1211 Geneva 20, Switzerland

Tel: (41 22) 338 9523Fax: (41 22) 338 8040E-mail: [email protected]: http://www.wipo.int/pct-safe


Documents

Theme 3: Filing a PCT Application · PDF file... Filing a PCT Application Electronically ... – does accept the request form in character-coded XML ... obtain a digital certificate