PA 07/2018: Practical Advice

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.

An alternative to submitting faxes to the International Bureau, for example, in the case of failure of a fax transmission

Q:  I tried to transmit by fax some amendments under PCT Article 19 to the claims of an international application that had also been filed by fax, but the fax transmission of the amendments did not work.  I am aware of the ePCT system, but I have not started to use it yet and I do not have access rights to the international application in ePCT. Since I am in a hurry to meet the deadline, is there a way for me to transmit documents to the International Bureau quickly and easily through ePCT?

A:  As a result of the transition of fax technology from analog to VOIP (Voice Over Internet Protocol), fax transmission has become unreliable in cases where telecommunication service providers have moved to VOIP technology.  Where this technology is involved at any stage of the connection, it can appear to the sender that a transmission has been successful even though some or all of the transmission has in fact been lost.  The transition to VOIP also applies to faxes to and from the International Bureau (IB).  See also the notice published in PCT Newsletter No. 12/2017 at:

https://www.wipo.int/edocs/pctndocs/en/2017/pct_news_2017_12.pdf

As there are risks of failed or incomplete submissions when transmitting documents by fax, we strongly advise applicants to move away from this mode of transmission when submitting documents to the IB (including the IB as receiving Office).  The most efficient, safe and reliable way to transmit correspondence and documents to the IB, including amendments to claims under PCT Article 19, is to use the corresponding “Action” in ePCT.  However, since you are not yet familiar with ePCT, and you are short of time, you could instead easily use the document upload feature in ePCT.  If you use this feature, the document will be inserted directly into the application file, without having to be manipulated manually, which will speed up the processing at the IB. 

In order to use the ePCT document upload feature, all you have to do is create a WIPO account, if you do not already have one for using other online services at WIPO.  It only takes a few minutes to create an account by clicking on the link “Create WIPO account” on the ePCT home page (https://pct.wipo.int), filling in the required information and validating the account.  For further details, see “Getting started” at:

https://www.wipo.int/pct/en/epct/learnmore.html?N=588

It is recommended that you set up strong authentication methods for your WIPO account as this allows you to use more features of ePCT.  As long as you are able to use your phone to receive text messages or to use a standard one‑time password app such as Google Authenticator, this can be entirely self‑service and should only take another minute.  However, it is also possible to sign in by only entering the username and password that you have created if you simply wish to upload documents to the IB straight away.  Then if you wish, you could later move on to using strong authentication methods and using more features available in ePCT.  Note that if you sign in without strong authentication, you are limited to the following ePCT functions:

  • uploading of post-filing documents in PDF format to the IB only;
  • submission of significantly fewer online requests, with limited validations and only for published applications; and
  • use of the third party observation service.

When you sign in to ePCT, the default landing page is the ‘Workbench’ which will be empty in your case because you are not signed in with strong authentication and, in any case, you do not yet have access rights to any international applications in the system. In order to upload a document, (for example your Article 19 amendments), you first need to identify the international application in question by entering the PCT application number in the search field, followed by the international filing date when prompted. The system immediately checks that the filing date and application number match, and, if they do, you should select the reason “upload documents” which will automatically open the corresponding online action in ePCT.  You can then proceed by taking the following simple steps:

  • use the ‘Document type’ dropdown list to select the type of document you want to transmit to the IB (note that, when you are signed in to ePCT without strong authentication, the only recipient to whom you can upload documents is the IB);
  • attach the document by clicking on the “Add document” button to select and attach a document from your computer – note that the “Add document” button also indicates the type of file format required which, in most cases, is PDF, although text format is required in the case of sequence listings (if required, you can select more document types to add to the same upload transaction);
  • once you have added all the required documents, the informal message field allows you to type an optional informal message for the IB which will be rendered on the automatically-generated cover letter that will accompany the uploaded documents (you can preview that cover letter by clicking on the ‘Preview’ button);
  • select the format in which the signature is being provided – if a letter or other document signed by the authorized signatory for the international application is already attached, you can choose this option, otherwise, either the text signature should be typed in or a file containing the image signature of an authorized signatory should be attached and the capacity of the signatory indicated in the field provided;
  • click on “Upload” to complete the transaction and submit the attached documents to the IB.

For further information, see “Upload documents” at:

https://www.wipo.int/pct/en/epct/learnmore.html?N=820

For future applications, once you have set up strong authentication for your WIPO account and gained access rights as eOwner or eEditor, you can use the specific ePCT Action “Amendments under Article 19”, which is best practice and requires the amendments to be attached in either DOCX or text‑based PDF format. 

It is recalled that applicants can request access rights (eOwnership) to an international application after filing, even if the application was filed on paper.  However, if you file international applications electronically, the best practice is to use ePCT-Filing, if available at your receiving Office of choice, since you can then set up ePCT access rights even pre-filing. Alternatively, if you file electronically using an ePCT-compatible filing software (PCT-SAFE, EPO online filing or JPO-PAS), it is strongly recommended to set up ePCT access rights at the time of filing using the steps explained in the following FAQ:

https://www.wipo.int/pct/en/epct/learnmore.html?N=518

Note that WIPO is in the process of developing a new PCT general upload system (outside the ePCT system) which would allow basic upload of documents or filing of an international application without registration when login to ePCT is not possible.

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