PA 11/2009: How to file international applications electronically using the PCT-SAFE software

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 would like to know how to go about filing my first PCT application electronically using the PCT-SAFE software (I will be filing the application with the International Bureau as receiving Office (RO/IB))

A:  The PCT‑SAFE (Secure Applications Filed Electronically) software (hereinafter:  “PCT‑SAFE”) offers PCT users the means to prepare their international applications in electronic form and to file them either via secure online transmission or using physical media such as CD-R.  There are a number of things that you should do before embarking on your first filing using PCT‑SAFE, therefore you should leave yourself plenty of time to prepare yourself beforehand, well before the expiration of the priority year.  Information on user documentation and training materials which may be consulted, as well as on the various steps to take prior to filing your first PCT application electronically, is given below.

1.      Installation of the software

The first thing you should do if you wish to file a PCT application using the PCT‑SAFE software is to install the PCT‑SAFE client software on your computer and familiarize yourself with it.  The software can be downloaded at:

http://www.wipo.int/pct-safe/en/download/download_client.htm

or, if you prefer, the PCT‑SAFE Help Desk can send you a CD-ROM installation by mail, free of charge.

For those PCT users who have already filed a PCT‑EASY application (that is, an international application filed on paper together with a copy of the request and the abstract in electronic form, prepared using the PCT‑EASY function of the PCT‑SAFE software), it will be easier to familiarize yourself with the procedure for a fully electronic filing.

2.      Consult online documentation

It is highly recommended that, before you make your first electronic filing, you consult the relevant parts of the PCT‑SAFE page of the WIPO website as it contains an abundance of detailed information on how to file international applications electronically as well as helpful training tools.  The page includes:

- an electronic learning tutorial which gives you step-by-step instructions on how to complete the electronic request form and how to prepare an application for submission in either PCT‑EASY mode or in fully electronic mode;

- various user guides containing tips for preparing applications (there is a quick reference guide as well as one which gives full details of how to use the software) – screen shots of sample applications are used as an aid to understanding the way in which applications should be completed and submitted; and

- more specific user information, such as using PCT‑SAFE in combination with EFS‑Web (the electronic filing system used by the United States Patent and Trademark Office as receiving Office) and detailed information on how to use the PCT‑SAFE Editor, a software tool used to prepare PCT applications in XML format for electronic filing. 

3.      Obtain a WIPO digital certificate

A WIPO digital certificate can be obtained free of charge from WIPO via a simple online enrollment procedure at: 

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

This is required for secure online transmission of the international application package and may also be used for digitally signing the request form.  Note that certificate requests require manual intervention by the PCT-SAFE Help Desk and are processed during its opening hours (Monday to Friday, from 9.00 am until 6.00 pm, Central European time), usually within one working day.

4.      Electronic submission structure and format

You should familiarize yourself with the information published regarding e-filing structure and format in the Administrative Instructions under the PCT, Annex F, Section 3 at:

http://www.wipo.int/pct/en/texts/pdf/ai_anf.pdf

See, in particular, Section 3.1.2 regarding PDF format requirements (the most commonly used format for filings with the RO/IB). 

You will need to decide on the format in which you are going to file your application, for example, whether you will file it in XML format, for which you would benefit from the fee reduction of CHF 300 or equivalent, or in PDF format, for which you would benefit from a fee reduction of CHF 200 or equivalent.  For further information, see the Schedule of fees annexed to the PCT Regulations.

5.      Demo filings

Once you have consulted all the relevant documentation, we recommend that you allow yourself sufficient time for testing purposes before you start production filings.  This way, any technical problems you might have can be ironed out beforehand.  Before doing this you should make sure that the digital certificate is correctly installed and determine the workflow for applying digital signatures.  Once this is done, select the “Demo” mode when starting PCT‑SAFE.  The application will be filed to a “demo server” and a demo receipt will be issued by WIPO confirming that the demo filing has been successfully completed.  The PCT‑SAFE Help Desk is happy to provide feedback on test filings to reassure new filers.  Note that applications filed in the demo environment must not contain any confidential or sensitive data. 

6.      Real filings

Once you have successfully completed one or more test filings, you should be ready to file a real application.  This is done by selecting “Production mode” when starting PCT‑SAFE.  It is recommended that you always include pre-conversion documents as a safeguard against conversion errors (see Section 706 of the Administrative Instructions under the PCT), and that you always allow sufficient time for filing before the expiration of the priority year in case there are last minute technical problems.  The receiving Office server at the RO/IB operates 24 hours a day.  To secure your international filing date for a given day, the transmission of the application should be successfully completed before midnight, Geneva (Central European) time.

Important points to be aware of when e-filing with PCT receiving Offices other than the RO/IB

If you wish to file your international application electronically with a receiving Office other than the RO/IB, such filings will currently be accepted by the receiving Offices of the following PCT Contracting States:  Australia, Canada, China, Denmark, Finland, Germany, Japan, Malaysia, the Netherlands, the Philippines, Poland, the Republic of Korea, Romania, Slovakia, Spain, Sweden, the United Kingdom as well as the European Patent Office as receiving Office. 

Note, however, that not all e‑filing offices accept direct online filings with PCT‑SAFE.  With the Australian Patent Office and the Canadian Intellectual Property Office, digitally signed application packages are uploaded and submitted through the Office’s website.  For applicants filing with the United States Patent and Trademark Office as receiving Office, EFS‑Web filings are not considered fully electronic in PCT‑SAFE.  Instead, an applicant would prepare a hybrid PCT‑EASY/EFS‑Web request form in a zip file which is uploaded to EFS‑Web with the application documents.  For further information, see:

http://www.wipo.int/pct-safe/en/support/guides/pdf/us_e_easy_v3.pdf

and the “Practical Advice” published in PCT Newsletter No. 12/2006 at:

http://www.wipo.int/edocs/pctndocs/en/2006/pct_news_2006_12.pdf

For further information on the requirements of the various receiving Offices which accept e‑filing, for example to find out which methods of filing, document formats and digital certificate(s) they accept, please consult the table at:

http://www.wipo.int/pct-safe/en/support/notifications/efiling/efiling.pdf

or check with your receiving Office or the PCT‑SAFE Help Desk.

Note also that only the international application can be filed online at this time, and filers should check with RO/IB for instructions on how to submit subsequent documents.  Reference is also made to the “Practical Advice” which deals with this matter, which was published in PCT Newsletter No. 04/2009 at:

http://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_04.pdf

The PCT‑SAFE Help Desk can be contacted at:

by e‑mail:        pctsafe.help@wipo.int

by telephone:  +41 22 338 95 23