PA 05/2014: The differences between using the PCT-SAFE software and the ePCT-Filing system when filing international applications 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 work for an Australian firm of patent attorneys and it has, up until now, been the practice of our firm to prepare and file PCT applications using the PCT-SAFE software. However, we have seen that it is now possible for us to file international applications using ePCT-Filing with the Australian Patent Office as receiving Office (as well as with the International Bureau as receiving Office). What are the differences between these two ways of electronic filing?

A: PCT-SAFE, which has been available since 2003, is locally installed software which holds all its data on the individual user’s machine. The application contains reference data, such as fee amounts and competent Offices, which are typically updated once a quarter. Many users do not have the administrator privileges on their computers that they need to perform the update themselves without the assistance of their IT departments, and thus may not always have the most up-to-date version of the software installed at the time of filing. No Internet connection is required until the point of online submission of the PCT application.

ePCT-Filing is a web-based solution for online preparation and filing of international applications using ePCT private services, hosted at the International Bureau (IB). Provided that you already have a suitable web browser and that you have obtained a WIPO digital certificate, ePCT-Filing does not require any particular software to be installed on your computer, as you work directly online. The reference data is the live information held at the IB, which is promptly updated after the IB has been notified of any relevant changes.

ePCT-Filing has a wider range of checks than the PCT-SAFE software. By preparing an international application using ePCT-Filing, most formalities errors and certain physical defects will be detected prior to submission and can be corrected by the applicant before the application is filed. Also, ePCT provides previews of the data and documents to be filed from the same IT systems that are used by the IB itself, so you can be confident that there will not be discrepancies between what you see in ePCT and what the IB will receive for processing.

By using ePCT-Filing, your international application will be associated with your ePCT account before it is even filed, so it is possible to share access rights with colleagues or associates prior to filing, if required. Subsequently, post-filing access to the file is already established with no need to request access rights separately to the IB in order to see the online file and receive notifications about the processing status of the application. Like PCT-SAFE, ePCT-Filing offers an address book function, and it is possible to import PCT-SAFE address book data into ePCT. This address book can be shared by several users.

The IB encourages users to start using ePCT-Filing whenever this is possible. At the time of writing this, the only Offices which currently accept the filing of international applications in this way are the receiving Offices of: Australia, Austria, Finland, Sweden and the IB. However, since applicants who are residents and/or nationals of any PCT Contracting State are entitled to file international applications with the IB, this means that ePCT-Filing is open to all applicants at the RO/IB, provided that any national security provisions have been met prior to filing.

When filing with the RO/IB, or with an Office which uses a hosted server, such as the Australian Patent Office, the full contents of the application should normally be available online immediately after filing. However, in the case of receiving Offices which already operate their own e-filing server, such as the Swedish Patent and Registration Office, the full contents of the submitted application will not be available online in ePCT until the receiving Office transmits the record copy to the IB, although you will still be able to see the as-filed version of the application in ePCT. Where the receiving Office, International Searching Authority or International Preliminary Examining Authority permits it (something which is already possible in the case of the Australian Patent Office in its capacity as RO, ISA and IPEA and which the IB hopes will soon be increasingly the case at other Offices), ePCT also allows you to upload post-filing documents to those Offices via the same ePCT interface rather than you having to post, fax or have a separate online account with them.

Note that if you do, for the time being, continue to use PCT-SAFE, you can, nevertheless, benefit from ePCT private services, for example to access your application files and carry out various “Actions” on your files, by taking eOwnership of the applications. You can request eOwnership at the time of filing by providing the ePCT customer ID along with a one-time security code generated in ePCT. Further information on the use of PCT-SAFE, including the user guide entitled “Assign eOwnership in ePCT at the time of filing”, is available at:

http://www.wipo.int/pct-safe/en/support/user_documentation.htm

Both PCT-SAFE and ePCT-Filing entitle the applicant to the same reduction in the international filing fee, as indicated in item 4(d) of the Schedule of Fees at:

http://www.wipo.int/pct/en/texts/rules/rtax.htm#_S

Although there is no problem with you continuing to file international applications using PCT-SAFE, it would certainly be beneficial for you to start using ePCT-Filing, and the IB hopes that all PCT users will migrate to using ePCT-Filing wherever possible.

An ePCT-Filing demo system has been set up to enable filers to familiarize themselves with the system, and filers are encouraged to move to production ePCT-Filing at their convenience. For further information and to get started, go to the ePCT Portal at:

https://pct.wipo.int/ePCT

or contact the PCT eServices Help Desk at:

e-mail: epct@wipo.int

telephone: (+41-22) 338 9523