PA 04/2009: Modes of filing documents/correspondence after filing the international application 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 have filed, on behalf of an applicant, an international application online with the International Bureau as receiving Office using the PCT-SAFE software.  Having received the international search report, I now wish to file amendments to the claims under PCT Article 19.  Can these amendments be filed online as well, or, failing that, can they be filed by way of an e‑mail attachment, or do they still have to be filed on paper? 

A:  Although it is possible to file international applications electronically using the PCT-SAFE software, either online or using physical media such as CD-R, it does not allow for the submission of subsequent documents in either of these forms.  

Even though, according to PCT Rule 89bis.2, the PCT provides for the filing of documents other than the international application in electronic form or by electronic means, the modes of transmittal of documents under the PCT which are available to the applicant are determined by the Office of receipt of the documents concerned.  Since amendments under PCT Article 19 are transmitted to the International Bureau (IB), it is the IB which determines the mode of transmittal of the amendments.  The IB will accept documents sent by fax, but not by e-mail, noting that if the amendments are transmitted by fax, the original of the document (confirmation copy) should be furnished to the IB within 14 days, as is also the case for transmission by fax of the international application or any replacement sheets containing corrections to the international application.  In other words, a confirmation copy is required in respect of any documents which are to be published, in view of the fact that the confirmation copy would normally be of better quality, and reproduction via optical character recognition would therefore be more accurate.

Although advance copies of notifications may be sent to applicants via e‑mail by the IB, as well as by the receiving Office, International Searching Authority and/or International Preliminary Examining Authority if they are prepared to do so[1], followed by a paper notification, note that only informal enquiries which are not related to specific international applications may be sent via e-mail by the applicant himself/herself.  Correspondence or documents relating to a specific international application may not be sent by the applicant via e-mail because this form of communication cannot be used validly to perform any procedural act before the IB, including the submission of amendments under PCT Article 19, requests for changes under PCT Rule 92bis or requests for withdrawals under PCT Rule 90bis and, to this date, no other PCT Office or Authority has informed the IB of the acceptance of the submission of documents by e-mail.

An electronic document upload service, which would allow users to upload a number of applicant-submitted documents other than the international application itself, including amendments to the claims under PCT Article 19, is currently under development.  The International Bureau plans to make this service available to applicants in the near future.  For further information, see PCT Newsletter No. 01/2009, page 2.

Information on the forms of telecommunication in which PCT Offices are prepared to receive documents is published in the PCT Applicant’s Guide, Annex B, and information on the possible means of filing the international application itself is given, for each receiving Office, in Annex C.

[1]           Provided that the agent/common representative has furnished an e-mail address and authorized the above Offices/Authorities to send such notifications by e-mail.




References: r_89bis_pct; a_19_pct;

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