PA 03/2015: Accessing and managing an international application via ePCT private services when that application has not been filed electronically

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.

Q: I recently filed an international application on paper, and would like to know whether, in the case of paper filings, it is possible to make use of ePCT to access and manage those applications in the same way as it is possible with electronic filings. If so, how do I do this?

A: It is possible for you to access paper-filed international applications (as well as international applications that were filed using the PCT-EASY mode of the PCT-SAFE software) via ePCT, provided that certain steps are taken.

The first thing that you will need to do in order to use any of the ePCT services is to create a basic WIPO user account. Once you have done this, you will be able to use ePCT public services, which enable you to upload documents and correspondence, such as amendments under PCT Article 19, declarations under PCT Rule 4.17 and withdrawals under PCT Rule 90bis, to the International Bureau (IB) or the receiving Office of the IB (RO/IB). To create a WIPO user account, go to the ePCT Portal at:

https://pct.wipo.int/LoginForms/epct.jsp

simply click on “create an account” on the bottom of that page, and fill out the short form with your details. For further information on creating a WIPO user account, please see the “Step-by-Step Guide for Document Upload in ePCT” at:

http://www.wipo.int/pct/en/epct/pdf/transition__to_epct_for_document_upl...

However, by further securing your account with a digital certificate, you can then access ePCT private services, which allow you to access your unpublished international application (after having confirmed eOwnership of it), and offer many more features, including a large number of actions that can be taken in relation to your application. For information on how you can authenticate your user account with a digital certificate, please refer to the “ePCT User Guide for Applicants and Third Parties”, from page 29 to 34, at:

http://www.wipo.int/pct/en/epct/pdf/pct_wipo_accounts_user_guide.pdf

The above information is valid for all international applications, including those which were filed electronically. However, in the case of:

– paper filings,

– PCT-EASY filings,

– applications filed electronically with a non-supported certificate, or

– applications filed electronically using a certificate that does not match a certificate in the WIPO user account of the current user,

before you can confirm eOwnership of your international application, and subsequently access and manage it in ePCT private services, you must take the following extra steps for security reasons:

1) wait until Form PCT/IB/301 (Notification of Receipt of Record Copy) has been issued to be sure that the IB has received the record copy and in order to obtain the confirmation code, which can be found on the bottom of the form (where Form PCT/IB/301 is sent to the applicant by e-mail, this code would also appear in text form in the body of that e-mail so that it is easy to copy and paste it, without having to retype it); and

2) once you have the confirmation code, generate a request for eOwnership of the international application by going to the eOwnership tab in ePCT private services and entering the international application number, the international filing date and the confirmation code. Since the international application was not filed electronically using a valid digital certificate, you will see the message “ePCT cannot detect and validate any digital certificate used to file this international application. Please submit an eOwnership request to the International Bureau”, and you should click on “yes” to request eOwnership from the IB.

Note that the details of the person making the eOwnership request should match the details of one of the following: the applicant, the common representative, the agent or the person indicated in the address for correspondence of the international application. Furthermore, certain other questions will be asked regarding the international application, as an additional security check. Provided that your request is approved by the IB, eOwnership will be granted and you will then be able to access the international application directly in ePCT.

If such a request is received from a person other than one of the persons mentioned above (for example, a paralegal in a law firm who was not indicated in Form PCT/RO/101), the eOwnership request may, for security and confidentiality reasons, be refused by the IB, unless that person’s name appears on an appropriate document on file, for example, on a receipt of electronic submission. An automated e mail is sent to the person making the request informing him/her that the IB could not match him/her to any details in the international application, and that a new confirmation code in order to obtain eOwnership has been sent to the address for service (either the agent, common representative or address for correspondence). In parallel, a notification (Form PCT/IB/345) containing a new confirmation code will be sent by the IB to the address for service on record, giving the details of the person who made the request and inviting that person to pass the confirmation code to the person making the request if they deem this appropriate.

Please note that once an international application has been published, the code on Form PCT/IB/301 is no longer valid as a confirmation code in ePCT, as that form is made available on PATENTSCOPE at the time of publication. The confirmation code is also rendered invalid if a change under PCT Rule 92bishas been submitted since filing, since Form PCT/IB/301 might be in the possession of someone who was removed from the record as a result of that change. In such cases, the online web form will prompt you to request a new confirmation code from the IB, which will then be sent to the address for service for the application.

For any international applications that you may be filing in the future, taking eOwnership of it would be easier if you file your application using ePCT-Filing, since eOwnership rights are automatically set up at the time of creating the new draft application and it is even possible to assign access rights in ePCT to other associates before the application is actually filed. Moreover, ePCT-Filing provides validation checks that can help you to correct any potential errors before you actually submit the application, and fee reductions are applicable when filing electronically. If your usual receiving Office does not accept ePCT-Filings, you can file with the RO/IB as it accepts international applications from residents and/or nationals of any PCT Contracting State.

For full details regarding the setting up of WIPO accounts, assigning and managing access rights in ePCT, and an overview of the features and functionalities of ePCT, please refer to the “ePCT User Guide for Applicants and Third Parties” at:

http://www.wipo.int/pct/en/epct/pdf/pct_wipo_accounts_user_guide.pdf

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