PA 11/2015: Assignment by the agent of eViewer rights to the applicant when preparing and filing international applications using ePCT‑Filing

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 am the agent for a PCT application that is going to be filed using ePCT‑Filing. The applicant is a national of the country where I practice and where the application is going to be filed, but he is actually based in another country in a different time zone, and so face‑to‑face contact, and even telephone contact, is not feasible. Is there any way in which I can give the applicant online access to the application so that we can work together on it even before filing, and also during the international processing of the application? I feel that this would be a transparent way of proceeding with the application and would enable him to spot any errors, for example, in the bibliographic data.

A: If you are the person who is going to prepare the new PCT application in ePCT‑Filing you will, by default, have “eOwner” access rights to the newly-created application, enabling you to assign access rights to other users who have set up a WIPO User Account and authenticated it with a digital certificate, and with whom you have concluded an “eHandshake” in the ePCT system. If you wish to involve the applicant in the checking of the application and enable him to monitor the various stages of the application process, you can assign “eViewer” access rights to him. By doing this, he will be able to review the draft PCT application before filing, and thus notify you of any errors so that you can take the necessary corrective action. Note that “eViewer” access rights permit the viewing of international applications but not the editing of any documents or data, nor further assigning of access rights (eViewers can, however, remove their own access rights if, for example, they assign their rights to the application to another person).

Access rights that are assigned before an application is filed remain valid after filing. By giving eViewer access to applicants or inventors before filing, not only will they be able to check the application for any possible errors and view what is going to be filed, but they will also be able to view the status of their application and follow the progress of their application after filing, via automated e‑mail notifications from ePCT (eViewers receive such e‑mail notifications). For example, they will be notified each time a PCT Form is issued by the International Bureau (IB), or a new document is added to the electronic file, such as the international search report and written opinion of the International Searching Authority (ISA), as soon as the document concerned has been received at the IB. After filing, it is also possible in ePCT to see the scheduled date for international publication and to preview the front page of the application exactly as it will be published, so that any potential errors can be spotted and corrected before the completion of technical preparations for publication (normally 15 days before the scheduled publication date). Furthermore, the applicant will be able to see, via the Time Line provided in ePCT, when the 30‑month time limit for entry into the national phase will expire.

Note that it is also possible to assign eViewer rights to applicants or other interested parties after filing when a PCT application has been filed using the PCT‑SAFE software or any other e‑filing software that is compatible with ePCT.

Carl Oppedahl, a patent attorney in the United States of America, recommends the use of ePCT and the attribution of eViewer access rights to clients, recounting the following practical example:

“We recently had a PCT filing project in which the inventor was in Thailand and another client contact person was in Switzerland. Using ePCT, they were able to review the draft Request and draft patent application prior to filing. Without ePCT it would have been much more difficult to get the benefit of review by these people.”

For further information on how to authenticate a user account with a digital certificate, 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

For full details on managing access rights, see pages 13 to 18 (“Security and access rights management”) of the frequently asked questions on this matter at:

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