Yet another nice thing about ePCT

The other day I stumbled quite by chance upon yet another nice thing about ePCT.  In this blog article I will describe the nice thing.  And the alert reader might be able to win a prize.

First a bit of background.  As regular readers of this blog are aware, I consider it to be very near to malpractice for a practitioner to fill out a PCT Request by hand.  I consider the Best Practice to be the use of one of the WIPO electronic tools to generate the PCT request.  For a filer who is filing in RO/IB, the Best Practice is to use ePCT to generate the PCT Request.  For a filer who is filing in RO/US, because of some stubbornness at the USPTO, it is not possible to use ePCT to generate the PCT Request.  So for now, until the USPTO stops being stubborn, the Best Practice (blog article) is to use PCT-SAFE File Manager to generate the PCT Request.

The reason that I consider it to be very near to malpractice for a practitioner to fill out a PCT Request by hand is that there are so many things to screw up.  The WIPO electronic tools carry out literally hundreds of validations that greatly reduce the risk that a practitioner would screw up.  This saves the practitioner from embarrassment in front of the client, and reduces malpractice risk.

Having set the background, let me describe the nice thing that I stumbled upon.

I had a client task coming up — preparing a PCT application based upon a very high quality provisional application.  (Isn’t it nice when that happens — that the provisional is actually of high quality?)  I faced the same question that every US practitioner faces when they are making plans to file a PCT application — for this filing should I do it in RO/IB or RO/US?  And for a number of reasons I figured I would prefer to file in RO/IB.  Which is fine.

Although sometimes it all gets put off until the last minute, in this case I had clear client instructions well in advance.  (Isn’t it nice when that happens?)  So I prepared a first draft of the PCT Request well in advance of drop-dead day, and shipped the Request off to the client for review.  Which WIPO tool did I use?  Well of course it was ePCT (because the intended RO was RO/IB).

But then something happened, and I found that I would need to file in RO/US instead.  (This is where you get to win a prize, guessing what might have happened!)  And what follows automatically from this is that I would need to use PCT-SAFE FM, not ePCT, to generate the Request.

And I cringed to imagine that I might now have to burn an hour or more of time, laboriously hand-keying all of the bib data into PCT-SAFE FM that I had previously laboriously loaded into ePCT.  It’s not only the time consumed, but also the duplicated risk of typing a digit wrong.

Here’s the welcome good news.  What I found, clicking around a bit, is that I was able to go into ePCT and simply save the Request project as a backup file on my hard disk.  And then I was able to import that file into my PCT-SAFE FM.  All of the bib data loaded smoothly and seamlessly into PCT-SAFE FM.

I did not have to retype even a single bit of information!

So then I proceeded in finalizing the Request.  This of course required me to go back into ePCT to obtain a super-secret authorization code which I then had to paste into the signature box in PCT-SAFE FM.  And then I was ready to go.  I generated the Zip file and uploaded it into EFS-Web.  Very smooth, very seamless.

This is a reminder of how smart the WIPO folks are, that they would build little features like this into their electronic filing tools.

Now to the prize.  Who will be the first person to guess correctly what event occurred that made me conclude that I would have to shift my filing path in this case from RO/IB to RO/US?  Understanding that this event was several days before the due date for filing.  The winner, by posting a comment below containing the correct guess, will win a Mi Band, the really nice fitness band that I reviewed recently.

Posted in PCT |

9 thoughts on “Yet another nice thing about ePCT

  1. Two guesses. Lack of a Foreign Filing License or client’s decision to use a particular ISA only available for RO/US.

    • Let’s take these one by one.

      Lack of an FFL. Well, recall that I had originally made plans to file in RO/IB. This means that (a) the invention was not made in the US or (b) the priority application was substantively identical to the draft PCT application and the priority application had a granted FFL.

      Client’s decision to use a particular ISA that was available to RO/US but not available to RO/IB. Turns out this is logically impossible. If an applicant is entitled to use (say) RO/US then by definition the applicant can use all of the same ISAs in RO/IB (and maybe more, but never fewer).

      • Actually, there is a scenario where an ISA is available to RO/US but not RO/IB. For example, when the ISA/IL first started searching for US applicants, there were two restrictions to it: only, if the application was filed with the RO/US and not with the RO/IB. As far as I know, said restriction is still in place but will be lifted soon (or has very recently been lifted). The second restriction is not relevant here, it has to do with the number of applications per quarter.

        Anyway, glad to see my hunch about the FFL was correct after all, although not quite as simple as I had mentioned.

        • Thank you for posting again. Yes you are quite right I had forgotten about the fact of RO/IL being available for US filers through RO/US but not through RO/IB.

  2. Either a problem with not having a foreign filing license (perhaps something was added to the provisional that took it beyond the scope of the original FFL?) or something went wrong with the WIPO crypto certificate and there’s not enough time to get a replacement?

    • This is very good. I had not even thought of the second possible explanation but of course you are right. If maybe the WIPO crypto certificate had expired in the last few days this might prompt the filer to migrate the project to RO/US.

      But you guessed correctly the exact thing that happened in our real case. We sent the draft PCT application to the client, and the client asked us to add some additional disclosure that went beyond the disclosure of the priority application. So the FFL in the priority application no longer sufficed to make it okay to use RO/IB.

      Brian wins the Mi band!

  3. “But then something happened, and I found that I would need to file in RO/US instead”: Your client’s foreign filing license was revoked, so you could not file in RO/IB, but only in RO/US.

    • This is a very good guess. Actually I had not imagined that an FFL, one granted, might be revoked. But thank you for posting.

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