How to e-file a "demo" PCT application with RO/IB
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This page describes an actual "demo" e-filing of a PCT application with the International Bureau using PCT-SAFE. If you follow these steps, you too can e-file a "demo" PCT application, and then you will be ready to e-file a "real" PCT application when you need to be able to file it.
Why you should file a "demo" PCT application. There are several reasons why you should go to the trouble to file a "demo" PCT application. First, you never know when you might suddenly need to e-file a real PCT application and it is important to make sure you have everything you need for such a filing and that it has been installed correctly. Second, as time goes on it is likely that more and more ROs will be willing to receive PCT filings through PCT-SAFE. You might as well start getting familiar with it now so that you will already be familiar with it when your preferred RO starts accepting PCT-SAFE filings.
There is yet another reason why you ought to try e-filing a "demo" PCT application. As discussed below, you have no choice, really, but to download and install the latest version of PCT-SAFE even for mere paper and paper-and-diskette filings. Having done so, you might as well try an e-filing since the software is already in place.
Assumptions made in this page. First, this page assumes that you have already used and are familiar with PCT-Easy. If you have used PCT-Easy, you know with how it permits you to enter bibliographic information -- the information that later appears on the front page of the PCT publication.. PCT-SAFE employs a nearly identical user interface. You specify a file number and what next appears is a screen with a series of red, green, and yellow circles. As you click on various tabs and provide information, the red and yellow circles turn green one by one. When you have eliminated all of the red circles (and have ideally turned all circles green) then you can e-file the PCT application.
Second, this page assumes that you have already:
Note that if you already have a cryptographic certificate from the European Patent Office, you may use that certificate in which case you need not obtain a WIPO certificate.
|I was able to obtain my WIPO cryptographic certificate in a mere seventeen minutes, following the instructions in the link listed above. At right you can see the certificate details.|
Note, too, that even if you think you will never e-file a PCT application, you will still want to download and install the latest version of PCT-SAFE, for the simple reason that you will be filing paper-plus-diskette applications, and PCT-SAFE replaces PCT-Easy that was previously used for paper-plus-diskette filings.
Choosing a Receiving Office. When you are getting ready to file a PCT application, you need to figure out which Receiving Offices are available to you. For example if all of your inventors and applicants are in the US, the ROs available to you are RO/US and RO/IB. (It must not be forgotten, however, that if you file with an "incorrect" RO, you do not lose your filing date, but instead the application gets transferred to RO/IB with the filing date preserved.)
Where e-filing is concerned, it is also necessary to find out whether the RO that you plan to use is willing to receive e-filings. At the present time, for example, RO/US does not receive e-filings, but only receives paper and paper-plus-diskette filings.
If the RO in which you intend to file is willing to receive e-filings, then a followup question is whether that RO will receive XML e-filings only, or will also be willing to receive PDF e-filings. At the present time, for example, RO/IB is among the ROs that is willing to receive either XML or PDF e-filings. The designers of PCT-SAFE have set it up so that it knows which ROs are willing to receive which types of filings. For example, if you tell PCT-SAFE that you plan to use RO/US it will "gray out" the e-filing options, leaving you to do only a paper or paper-and-diskette (former PCT-Easy) filing. On the other hand, if you tell PCT-SAFE that you plan to use an RO that only receives XML but will not receive PDF, it will "gray out" the PDF option. Finally, for example, if you tell PCT-SAFE that you plan to use RO/IB, then all filing-format choices will be available.
Keep in mind that if you are e-filing a PCT application with an RO that is not RO/IB, you would need a cryptographic certificate that is accepted by that RO.
Export rules. You also must consider the export rules for the country in which the invention was made. For example, the United States rules require a filer having an invention that was made in the US to obtain a foreign filing license prior to filing outside the US. For an invention made in the US, the filer should not make his or her first filing outside of the US without first having obtained a foreign filing license from the USPTO. (A foreign filing license obtained other than by means of filing a US patent application costs $130; see 37 CFR §§ 5.12 et seq.)
For a proposed PCT filing that is text-identical to a previous US patent application, the filer should check to see if a foreign filing license has already been granted for the invention, for example in the filing receipt for the US application. In most cases a foreign filing license will already have been granted and the filer may freely file outside the US (for example with RO/IB) without having to worry about the export rules.
The filer can avoid having to worry about the export rules by filing in the RO of the country where the invention was made. With such a filing, the RO determines whether there is any export problem before exporting the record copy to the IB.
This disfavors filing in the RO/IB, because anyone who considers filing in RO/IB (or indeed in any country that is not the country where the invention was made) has no choice but to figure out whether such a filing would run afoul of export rules.
Certified copy of priority application. For a proposed PCT filing that claims priority from one or more previous national applications, it will be necessary to provide a certified copy of each such patent application. Most filers are aware that if they file in the RO of the country where the priority applications were filed, it is possible to request that the RO attend to preparing and forwarding the needed certified copies. This disfavors filing with RO/IB since the priority application was almost surely filed in some patent office that is not the IB. For example, if the priority applications are US applications, it is preferable to file with RO/US so that RO/US will do all the work of preparing and forwarding the certified copies. If the proposed PCT application is filed (whether electronically or on paper) with RO/IB, it will fall to the filer to attempt to obtain the certified copies and to transmit them to the IB. (Question for the alert reader -- can you think of any circumstance under which you could file with RO/IB and reasonably expect it to make a certified copy of a priority document?)
Filing with RO/IB. Notwithstanding the factors discussed above, you might well choose to file with the RO/IB, for example under any of the following circumstances:
How to do a "demo" PCT e-filing. If you choose to do your "demo" e-filing with RO/IB (which is what this page recommends) your next decision is whether to file in XML or PDF. I recommend trying one of each, so that you can become familiar with all of the details of each type of filing. In fact I recommend trying several XML filings, one with each of the XML authoring tools now available (PASAT/XPort, PatXML, and PCT-SAFE Editor).
In the case of a PDF filing, you need to provide separate PDF files for each of the parts of the application -- specification, claims, abstract, and drawings. For a "demo" file these could be any old PDF files, of course.
For the XML filing described here, I simply re-used the XML application I prepared for the ePave filing described at www.oppedahl.com/efs/epave2/safe-epave.htm.
|When you launch PCT-SAFE, the first thing you need to do is decide whether you are doing a "real" PCT filing (which WIPO calls "production mode" or a "demo" filing. In the example I describe below, I chose "demo" mode and you can see on the filing receipt that it is a "demo" filing.|
Having selected "demo" mode, I then filled in the various bibliographic fields -- title, inventor's name, etc. Eventually I came to the "contents" tab.
|It is in the "contents" tab that you specify which of the filing
formats you plan to use. The choices are:
Once you have gotten all the circles to be non-red (and ideally have gotten all the circles to be green) then you can sign and submit the e-filing. The signing is done by means of the above-mentioned cryptographic certificate, using the password you selected when you exported the certificate from your web browser. You can see the actual results of my filing:
You can see the actual serial number that this case was given: PCT/IB2004/030038.
Interestingly, you can see that the XML file specified a country of "US" (because I was recycling a previous US XML filing) and yet PCT-SAFE did not mind this. PCT-SAFE does not, apparently, require that the "country" be "IB" or that it match the two letters of the Receiving Office being used.
|Reporting the filing to the client. After doing a real PCT e-filing you would need to be able to report to your client exactly what was filed. One convenient way to print out what was filed is to select "view by document" shown at E in the file manager. You can then click on and print various files including, for example, the "application-body.pdf" file shown at F.|
This page is http://www.patents.com/pct/efile1 .