A member of the PCT listserv asks:
Am I missing something about what is so great about preparing an PCT application package via ePCT?
For most all of my PCT applications, I have to file with the RO/US and elect the ISA/US. Thus, in such a situation, I understand that the only thing ePCT is good for is to prepare the Zip file as one has to use EFS-Web to file the Zip file, the application papers, and pay the fees.
To me, the ePCT interface is cumbersome, more so than the PCT-Safe software.
So, I don’t understand what is so great about ePCT… Can someone enlighten me?
My comments are below.
First I should point out that this practitioner is already doing the right thing, which is to use WIPO-provided software to prepare the PCT Request. Her habit is to use PCT-Safe and for many years that was the Best Practice. PCT-Safe validates lots of the user inputs. This reduces greatly the risk of looking stupid in front of the client, and it reduces the risk of committing malpractice in the PCT filing process. She’s already doing the right thing.
In contrast, around half of all PCT applications filed in the RO/US are filed by a practitioner who fails to use PCT-Safe (or ePCT) to prepare the PCT Request. As I’ve said many times, I consider this to be tantamount to malpractice.
So this practitioner is already doing the right thing. She’s only asking whether it’s worth the trouble to learn to use ePCT instead of PCT-Safe to generate the Request. And that narrow question is the focus of this article.
There is also a separate question of whether the practitioner should go to the trouble of learning how to use ePCT to manage the practitioner’s pending PCT applications after they have been filed. The point being that no matter how exactly the practitioner filed the PCT application, it is a Best Practice to use ePCT to manage the application after it has been filed. The PCT application could have been filed with ePCT or without, with PCT-Safe or without, it could have been chiseled onto stone tablets and hand-carried to the USPTO for filing. Regardless of how exactly the PCT application was filed, it is both possible and a Best Practice to use ePCT to manage the application.
But again the focus of this article is whether it’s worth the trouble to learn to use ePCT instead of PCT-Safe to generate the Request. The attentive reader will be able to guess that for me the answer is “yes”. I will explain why I feel this way.
Protection against more kinds of malpractice and embarrassment. For me the main thing about ePCT is that it carries out more validations of the user inputs as compared with what PCT-Safe validates. The added validations have a chance of catching more things that might lead to embarrassment or worse.
What are these additional validations? I’ll give one example but there are others. Recall that of all of the things that the practitioner might screw up when filing a PCT application, most are fixable later. Indeed most are fixable later even if the screwup is not noticed until years later when the national phase is pending. But there is one particularly sad type of screwup that is not fixable at all if not discovered almost immediately. One particularly sad type of screwup namely getting a digit wrong or a two-letter country code wrong or a filing date wrong regarding a priority claim. Such a mistake, if not discovered by the 4-and-16 date, is irrevocable in most designated Offices.
If you are using ePCT to generate your Request, the ePCT system will take the priority application number and filing date and Office code, and it will look them up in DAS. If it finds a match in DAS, then that’s fine. On the other hand if it is unable to find a match in DAS, it will give you a warning.
The warning might tip you off that you got a digit wrong, or two digits transposed, or the wrong Office code, or maybe you entered April 5 as if it were May 4.
This single type of validation, all by itself, is in my view a complete payoff for the (modest) one-time cost associated with learning how to use ePCT to generate a Request.
Ability to collaborate with office colleagues and inventors and clients. With PCT-Safe (and with legacy approaches such as the above-mentioned stone tablet filing method) there is no way to save a submission package and have a colleague open the package for review or further work. In contrast, with ePCT, it is super-easy (a matter of just a couple of mouse clicks) to permit an inventor to have read-only access to the submission package. It is super-easy to permit a colleague in the office to review and submit the application, or make changes and pass the package back to you for further action.
Ability to use shared address books. With legacy approaches such as the above-mentioned stone tablet filing method, each time you fill in the blanks for an inventor or applicant or agent, you are starting from scratch. There is every opportunity to type something wrong.
With PCT-Safe, you at least can use an Address Book. If a name (such as inventor or applicant or agent) is already in the address book, with just a click of a mouse you can drag it into your Request. This means that if you spelled it right in the Address Book, it will not get misspelled on its way into the Request.
But if you liked this feature of PCT-Safe, then you will really like how it works in ePCT. In ePCT you can share your address book with colleagues and they can share their address books with you. So if your colleague has information on an inventor or applicant in their address book, you can drag and drop it into your Request with the click of a mouse.
Always up to date. With PCT-Safe you always need to worry, what if the copy of PCT-Safe that is on your computer is not up to date? In contrast, with ePCT it is guaranteed always to be up to date.
Not limited to Windows. To run PCT-Safe you have to be on a Windows computer. In contrast a user of ePCT can make use of a Linux computer or Chromebook or Apple Mac computer.
Easier inclusion of secret code number for earliest possible access to pending application in ePCT. Of course anyone who wants to be trendy, modern, and up-to-date is already using ePCT to manage his or her pending PCT applications, regardless of how exactly the PCT application was filed (ePCT, PCT-Safe, EFS-Web, stone tablets). It is a Best Practice to use ePCT to manage your pending PCT applications.
How exactly does the system know that a particular newly filed PCT application is supposed to be visible to you in ePCT rather than being visible to (for example) me in ePCT? Basically the way the system knows is that you include a secret code number within your e-filed PCT application.
If you are using PCT-Safe to generate a ZIP file for use with EFS-Web, the process of getting your secret code number into the ZIP file is a bit of bother. You have to have PCT-Safe running and then when you get to a certain critical juncture you then have to open a new window and log in at ePCT to generate a secret code number which you then copy and paste into PCT-Safe and later it gets hidden away in your ZIP file and later the secret code number tells the IB to make the pending PCT application visible to you in ePCT.
In contrast, if you use ePCT to generate your ZIP file, the secret code number gets into the ZIP file automatically. You don’t need to spend time thinking about the secret code number at all.
Being ready for change. Eventually WIPO will shut down PCT-Safe. When that happens, you are going to wish you had already started learning how to use ePCT to generate ZIP files. It’s better to start learning how to use ePCT to generate ZIP files now. You can learn how to use ePCT to generate ZIP files at a time of your choosing rather than having to learn it some time in the future when there is some time pressure to get something filed.
The points just made above apply to the use of ePCT when you are filing in RO/US. By this I mean that the points just made above apply to the use of ePCT to generate the ZIP file that you will upload into EFS-Web. The points just made above are (in my view) an overwhelming body of points that justify going to the trouble to learn how to use ePCT to generate your ZIP file. The “learning how to use ePCT” task is only a one-time cost to you, not a recurring cost. Yes of course it’s a pain to have to learn some new interface when we were completely at ease with a previous interface. But you won’t get to pick whether or not to learn this new interface, because eventually PCT-Safe will be gone. You only get to pick when you will learn this new interface.
Whether to file in RO/IB instead of RO/US? There is a completely separate question which is whether you want to migrate some or most of your PCT filings to RO/IB. There is no reason, none whatseover, why a person should link this choice (which RO to use) with the choice being discussed above (which system to use to generate a ZIP file).
After all, you can use PCT-Safe to e-file in RO/IB if you like. My point being that if for some reason you feel like filing in RO/IB you don’t need to use ePCT to do it. (Indeed those who prefer the use of stone tablets can hand-carry them to WIPO in Geneva just as they could hand-carry them to the USPTO in Alexandria.) Indeed I recommend RO/IB for any filer who feels wedded to PCT-Safe and who does not want to migrate to ePCT. (Of course you need to make sure you have an FFL if the invention was made in the US, and of course you need to keep track of when it is going to be midnight in Switzerland.) There are many advantages to the use of RO/IB as compared with other ROs such as RO/US. As Mike R pointed out, the transmittal fee at RO/IB is much cheaper than the transmittal fee at RO/US. And depending upon your bib data, you may find that RO/IB gives you more ISAs to choose from as compared with RO/US.
For the filer who has gone to the trouble to learn how to use ePCT for generating Requests, I also recommend the use of RO/IB. The above points apply mutatis mutandis.