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 my international application to be treated, in the United States of America, as a continuation-in-part of two earlier applications. However, while completing the relevant part of the PCT/RO/101 electronic request form in the PCT-SAFE software (after clicking on the “Reference to parent application or grant” item on the States tab), I was unable to include reference to more than one parent application. How can I indicate the second parent application?
A: It is recalled that the paper version of the request form (PCT/RO/101) allows applicants (or agents) to include multiple references to parent applications on the Supplemental sheet which is provided for this and other purposes. The electronic request form in the PCT-SAFE software allows applicants (or agents) to easily insert information relating to a parent application or grant, by clicking on the “States” tab, and then clicking on the “Reference to Parent Application or Grant” at the bottom of that screen. A screen will then open containing a list of countries where such reference might be needed. For example, if “United States of America” is selected, a dropdown menu for listing the relationship as a continuation or a continuation-in-part (C-I-P) provides a place for entering the parent application number and filing date. However, the space given provides only for the indication of one parent application.
The best option, for anything that is not specifically provided for on one of the PCT-SAFE screens and which would normally appear on the Supplemental sheet of the paper form, is to do the following:
1) Create a document with the appropriate information, in your case, the date of filing and the application number of the (second) earlier application in respect of which you would like the international application to be a continuation-in-part (preferably clarifying that this is a second entry of an earlier application).
2) Save the document as a PDF file.
3) On the Contents>Accompanying Items tab select “Other” from the pull-down menu and type a meaningful name (for example, “Continuation-in-part information”) in the pull-down menu box (to replace the word “specify”). Click on “Add”. (Note that before you type in that name, the “add” box will appear grey, but once you have typed something in the box, it will become active).
4) Select the newly created row in the accompanying items table, open and attach the PDF document. (For EFS-Web filing, indicate that the file is “enclosed”.)
If you are filing with the RO/US via EFS-Web you will need to remember to upload the “other” accompanying item PDF file.
Note that when you click on the “Accompanying Items” tab, there is already a list of other items, such as “documents in pre-conversion format”, that can be added to the PCT-SAFE filing. The “Other” option under “Accompanying Items“ can be used to add any other items or information which are not already listed there and cannot be added or indicated elsewhere in the software, as shown in the continuation-in-part example, above. It is often used if one of the applicants is a national and/or resident of a State which is not included in the pull-down menu of States provided on the applicant screen, for example an overseas territory such as Bermuda – in such a case, the applicant can explain, on a separate sheet, why the State of nationality and/or residence is missing from the applicant screen, and add that sheet to “Accompanying Items”.
If you have any specific questions about the filing of an international application using the PCT-SAFE software, please contact the PCT e-Services Help Desk at:
telephone: +41 22 338 9523
Date retrieved: 17 May 2021