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One of the reasons why filers need to start learning to use ePCT (if they have not done so already) is that some day PCT-SAFE will be gone.  Yesterday, PCT-SAFE took one more step towards oblivion.  Continue reading →

Hello faithful readers.  On March 30 WIPO announced that it was ceasing the mailing of paper relating to PCT applications due to the work-from-home challenges from Covid-19.  On that day I announced that I would be presenting a webinar on how to become paperless with PCT.  The webinar took place.  There was a lot of very helpful audience participation and I think the webinar went well as a consequence.

You can download the slides here and you can view a recording of the webinar here.

Please post comments below.

(Followup:  You can download the presentation slides and you can view a recording of the webinar.  For more information see this blog article.)

Many readers of this blog are already set up to be paperless in all of their PCT activities.  This blog article is directed specifically to those who had not, until now, gotten set up to be paperless with PCT.  Such filers are affected by this announcement today from WIPO:

Due to the effects of the COVID-19 pandemic on the operations of the International Bureau and of postal systems worldwide, the International Bureau, also in its function as receiving Office, has suspended the sending of PCT documents (e.g. PCT Forms, letters) on paper.

If you are a filer who has not, until now, gotten set up to be paperless with PCT, then I strongly urge you to attend two free webinars which will take place on Wednesday, April 1 and Thursday, April 2.  In these webinars, you will:

• Learn how to get a WIPO user ID and password for access to ePCT, the electronic system for PCT applications.
• Learn why each person in your office must have his or her own WIPO user ID and password (no sharing)
• Learn how to set up two-factor authentication on your WIPO user ID and password (what WIPO calls “strong authentication”).
• Learn how to do e-handshakes with colleagues in your office so that you can give each other access to files.

In your existing and pending PCT applications, maybe you have not already provided an email address which WIPO and the International Searching Authority and the International Preliminary Examining Authority can use to send you correspondence electronically rather than on paper.  In this webinar, learn how to provide such an email address to WIPO for this purpose for your existing and pending PCT applications.

The ePCT system has a function that is similar to Private PAIR in that it permits you to see the content and status of your pending PCT applications even if they have not yet been published, just as Private PAIR lets you see the content and status of your pending US application.  In this webinar, learn how to gain access to your pending PCT applications in ePCT.  In other words, learn how to use the feature of ePCT that is similar to Private PAIR with your existing and pending PCT applications.

When you file a new PCT application tomorrow or next week, you simply must file it in such a way that you will be able to see it in the part of ePCT that is similar to Private PAIR.  In this webinar, learn what you need to do when you are filing a new PCT application so that you will be able to see it in the part of ePCT that is similar to Private PAIR.   

Going forward, you absolutely need to not send anything on paper to WIPO.  In this webinar, learn how to use the DAS system to send electronic certified copies of priority applications to WIPO (instead of physical certified copies).  Learn how to use ePCT to send other communications to WIPO.  Learn the difference between “ePCT actions” and “ePCT uploads” and learn which is better for you to use.

• To register for the free-of-charge Part-1 webinar, click here. 
• To register for the free-of-charge Part-2 webinar, click here.

Please understand that the Part-1 webinar is an absolute prerequisite for the Part-2 webinar.  You absolutely must attend Part 1 if you are going to attend Part 2.

Your presenter is Carl Oppedahl.  Carl has lectured frequently about Best Practices for e-filing of PCT applications.  

On January 30, 2020 the USPTO published a Notice of Proposed Rulemaking to fix what it thinks is a problem with its Foreign Filing License rules, 37 CFR § 5.11 et seq.  

The background to all of this is that in the spring of 2016, WIPO announced that soon its ePCT system would be available as a way to generate ZIP files for use in filing PCT applications in EFS-Web (at RO/US).   Shortly after WIPO announced this imminent new feature of ePCT, on May 6, 2016 the USPTO published a Federal Register notice giving very scary warnings to patent practitioners about the use of the ePCT system to generate such ZIP files.  The May 6, 2016 Federal Register notice had the unfortunate effect of scaring many US patent practitioners away from making any use at all of the ePCT system.

My best guess is that nobody will file any comment suggesting any change in the wording of the proposed rule change.  

The main problem that needs fixing, I suggest, is not so much the wording of the FFL rules themselves, but rather the fact that this Federal Register notice dated May 6, 2016 has been dangling in front of US patent practitioners for more than three years now, continuing to give its very scary warnings about the use of the ePCT system in connection with filing PCT applications in EFS-Web.  The main problem that needs fixing is that when the USPTO promulgates its new FFL rules some time after March 30, 2020, as it nearly surely will, USPTO needs to expressly walk back the May 6, 2016 Federal Register notice.  The opportunity to do this will present itself when the USPTO publishes its Federal Register notice promulgating the Final Rule.

On February 8, a group of twenty-one patent practitioners filed a comment in this proceeding.  You can see it here.   A main point in that comment is to remind the USPTO of the need for this express walk-back of the May 6, 2016 FR notice.

A second point made in the comment is to urge the USPTO to make its procedure for updating of bibliographic data in pending US patent applications more user-friendly, for example along the lines of the Rule 92bis “action” in ePCT.

The comment period closes on March 30, 2020.  My hope is that readers will file their own comments to the USPTO’s rulemaking proceeding, which you can do here.  One easy way to comment, if you find yourself in agreement with the twenty-one patent practitioners, is simply to file a comment adopting the recommendations of that comment.

You might wonder which PCT Receiving Offices get selected most often by PCT filers.  For many years the top Receiving Office was consistently RO/US (the USPTO).  In 2019 this changed. Continue reading →

If you are going to try to get a US patent from a PCT application, there are two possible paths — US national phase entry (also called “a 371 case”), and the filing of a bypass continuation.  How does this choice affect how long you have to wait to get a Filing Receipt?  If you pick the bypass route, the work gets done by the same folks who handle other ordinary patent applications.  It is OPAP (Office of Patent Application Processing).  These days OPAP often mails a Filing Receipt very promptly.  On the other hand, if you pick the national-phase-entry route, the work gets done by DO/EO/US.  And this office often takes a very long time to mail a Filing Receipt.  But some people have figured out how to get a very prompt Filing Receipt from DO/EO/US.  It is with some reluctance that I will now reveal how they do it. Continue reading →

For more than three years now, there has been an urgent need for USPTO to fix a problem with its FFL rules, 37 CFR § 5.11 et seq.  See my blog article USPTO needs to update its Foreign Filing License rule (October 29, 2016).  After three years of being repeatedly reminded of this, USPTO has done the right thing and has published a proposed revision to its FFL rules.  You can read about it here:

Facilitating the Use of WIPO’s ePCT System To Prepare International Applications for Filing With the United States Receiving Office, 85 FR 5362, January 30, 2020.

Comments are due by March 30.  Twenty-one patent practitioners filed this comment.