The USPTO does the right thing about ePCT

Dear readers, I am delighted to be able to report that the USPTO did the right thing this past week about ePCT. The executive summary of it is that the USPTO had published a Federal Register notice on May 6, 2016 that put a cloud over the use by US applicants of ePCT. The cloud related to USPTO’s interpretation of 37 CFR § 5.15 which has to do with foreign filing licenses. In a Federal Register notice on September 30, 2020, the USPTO promulgated a change to 37 CFR § 5.15 which removes the perceived problem relating to foreign filing licenses. The thing that I am delighted to be able to report is that the USPTO has expressly stated that the warning in the May 6, 2016 Federal Register notice no longer applies. Applicants that were apprehensive about using ePCT during the past four years can now set aside that apprehension. (There are still things about foreign filing licenses that applicants need to be careful about, as I will discuss.)

This good thing that the USPTO did on September 30, 2020 happened because twenty-one patent practitioners asked it to do so.  

That’s the executive summary.  Here are the details.

Of course what makes sense is for a patent applicant to provide bibliographic data to a patent office in computer-readable form.  When this happens, everybody benefits.  Yes, the patent office benefits because it does not need to expend resources for hand-keying of such bibliographic data into the patent office systems.  But the applicant also benefits because the risk of such data being miskeyed is reduced or even eliminated.  WIPO was at the forefront this with its PCT-Easy system.  I recall in the 1990s carrying out PCT filings in my newly launched law firm using WIPO’s PCT-Easy system.  You would run special software from WIPO on your computer in which you would enter the bibliographic data (which in the world of PCT is called “the Request”).  The software would generate a floppy disk bearing a ZIP file with the bibliographic data inside.   We would assemble an Express Mail package with the PCT application printed on A4 paper, and we would include the floppy disk.  This yielded a reduction of the international filing fee of one hundred Swiss francs.  But more importantly, this would auto-load into the computer systems of RO/US and into the computer systems at the IB.  I personally took many an Express Mail package to the post office, feeling that floppy disk inside the Tyvek Express Mail envelope.

The PCT-Easy software carried out “validations” — cross-checks and consistency checks that helped to save our firm from making mistakes that might be embarrassing or might even rise to the level of malpractice had they not been prevented.

That was in the 1990s.  At that time there was no such thing as e-filing of patent applications.  As years passed, WIPO kept updating and enhancing the PCT-Easy software.  Eventually the software got a new name — PCT-SAFE.  The software gained a capability of e-filing PCT applications at the RO/IB.  Our firm was not the first, but was among the first, to e-file a PCT application at the RO/IB using PCT-SAFE.  

Of course if you have an invention that was made in the US, and if you are going to file a patent application on that invention outside of the US, for example at the RO/IB, you would need to have a foreign filing license (“FFL”) pursuant to 37 CFR § 5.15.  Of course quite often the way it would work out is that you would already have the FFL because you had filed your priority application in the USPTO and you had already received an FFL in that priority application.

The USPTO was a bit of a laggard where e-filing is concerned.  It was possible to e-file a PCT application at the RO/IB long before it was possible to e-file any kind of patent application (PCT or otherwise) at the USPTO.  

When the USPTO finally did get around to making it possible to e-file PCT applications in RO/US, yours truly was the very first ever to do so.  This was in 2006.

USPTO’s e-filing system for PCT applications was, however, very primitive.  It was little better than a glorified fax machine.  The only way that an e-filer could provide the bibliographic data to the RO/US in 2006 was by means of ink on the page, in an image-based PDF file, that was uploaded to USPTO’s e-filing system.  If you wanted your PCT bibliographic data to get auto-loaded to RO/US you had to (gasp) paper-file your application with the floppy disk.  Or you could simply make use of RO/IB instead of RO/US (assuming that you had a satisfactory FFL if necessary).  

Eventually USPTO and WIPO worked out an arrangement where you could run PCT-SAFE to generate that ZIP file and instead of saving it to a floppy drive, you could save it to your hard drive, and then you could upload that ZIP file into EFS-Web and it would auto-load into the computer systems at RO/US and at the IB.

So things went for many years.  But PCT-SAFE runs only on Windows computers, not Macs or Linux computers.  It requires periodic updates.  WIPO’s software developers have to deal with the many and varied hardware platforms that users might be using, and the many versions of Windows that users might be using.  So it is understandable that eventually WIPO developed what came to be known as ePCT.  With ePCT, the only software that the user needs is a web browser.  All of the heavy lifting happens on a web server at WIPO.  There is no need for users to update things.  The user can be on a Mac or a Chromebook or a Linux computer.

Importantly, ePCT can validate all of the user inputs that PCT-SAFE could validate, but being online, ePCT can validate more things.  In particular ePCT can validate priority claims by cross-checking against the DAS system.  In this way, a user mistake about the digits of a priority application number, or filing date of a priority application, or identification of the office of first filing, has a chance of getting caught if ePCT is being used, a chance that is not available to the user of the older PCT-SAFE system.  For filing in RO/IB, the filer simply uploads the PCT application into ePCT and clicks “submit” and the application gets e-filed at RO/IB.  For filing in RO/US, it is unfortunately the same old extremely clunky multistep process with ePCT as it was with PCT-SAFE.  You enter your bibliographic data into ePCT, you generate a ZIP file, you download the ZIP file to your local hard drive, and you upload the ZIP file to EFS-Web.

No practitioner, once aware of the fact that ePCT protects against more malpractice risks and embarrassment risks than PCT-SAFE protects against, would ever want to use anything other than ePCT.  No practitioner who is e-filing in RO/US would ever want to use PCT-SAFE to generate the ZIP file when it is possible instead to use ePCT to generate the ZIP file.

Except.

Except that on May 6, 2016 the USPTO published the above-mentioned Federal Register notice.  The notice warned the reader that according to USPTO’s interpretation of 37 CFR § 5.15, the fact of an applicant’s having an FFL did not make it okay to use ePCT to create the ZIP file.  According to USPTO’s interpretation of 37 CFR § 5.15, to avoid the risk of running afoul of US laws about illegal export of strategic technologies, you would have to avoid uploading the abstract and the title into ePCT.  

But it’s worse than that.  To work out that there is a “safe harbor” for the filer who has the self-control not to upload the abstract or title to ePCT, one has to read and read and think and think, probably having to read the Federal Register notice multiple times and having to spend at least minutes and probably hours going back and forth looking at the details of the ePCT software and cross-checking them with the details of the various export control laws of the United States. 

For any practitioner that was not prepared to invest those hours of study, a commonly observed reaction was simply that the practitioner would resolve never to make any use at all of ePCT.  Not for its e-filing functions nor for any other functions.  During the past four years I had heard from literally hundreds of US patent practitioners who told me that so far as they were concerned, given the scary issues raised in the May 6, 2016 Federal Register notice, by far the simplest and safest way to avoid the risk of disbarment or going to prison was simply to avoid ever using ePCT at all.

ePCT offers many functions other than functions for generating ZIP files for e-filing in RO/US.  These include e-filing in RO/IB.  These include functions that are similar to Private PAIR, for viewing one’s own PCT applications that have not yet been published.  For the past four years, there are hundreds of corporations and thousands of patent practitioners who have avoided making use of those other functions of ePCT for the simple reason that having seen the going-to-prison warnings in the May 6, 2016 Federal Register notice, they were not prepared to spend the hours of study and head-scratching that would have been needed to work out exactly which functions in ePCT gave rise to such risk and which functions did not.

To the extent that there is some real or imagined problem with 37 CFR § 5.15 that justified the USPTO publishing that May 6, 2016 Federal Register notice, it is clear that the USPTO was aware of that problem in 2016.  One might have thought that the USPTO would immediately set to work in 2016 devising some rule change that would fix the problem.  I reminded the USPTO of this need on October 29, 2016 (USPTO needs to update its Foreign Filing License rule).  Months passed.  By June 2, 2017, USPTO had still done nothing about this, and in an effort to reassure corporations and practitioners that they could make user of ePCT without going to prison, I published this blog article:  Reluctant to migrate from PCT-SAFE to ePCT?

Despite repeated requests to the USPTO from WIPO and from the patent community, all of 2018 came and went, and all of 2019 came and went.

Finally on January 30, 2020, the USPTO published a Notice of Proposed Rulemaking, proposing to amend 37 CFR § 5.15 to eliminate the perceived problem in the rule.  See January 30, 2020 blog article USPTO proposes to fix its Foreign Filing License rules.  The notice established a comment period that ended March 30, 2020.

It should be appreciated that this is the sort of rules change that nobody is going to object to.  It is victimless.  Many people would probably figure that there is not really any need to file a comment at all.  

But of course there was an enormous need to file a very specific comment.  It was of extreme importance that the USPTO walk back the scary May 6, 2016 Federal Register notice.  Those hundreds of corporations and thousands of patent practitioners who had spent the past four years avoiding any use of ePCT needed to have a clearing of the air.

I asked the American Intellectual Property Law Association to file a comment.  That did not happen.  Others made similar requests of the intellectual property section of the ABA and of the Intellectual Property Owners.  No professional or industry association filed any comment at all, let alone a comment asking the USPTO to walk back the scary May 6, 2016 Federal Register notice.  

Fortunately what happened here is that twenty-one patent practitioners joined to file a comment that you can read about here (Twenty-one patent practitioners comment on USPTO rulemaking about Foreign Filing Licenses).  The twenty-one practitioners expressly asked that the USPTO walk back the May 6, 2016 Federal Register notice.  

On September 30, 2020 the USPTO published its rule change.  You can see the Federal Register notice.  Of course the rule change eliminates the perceived problem with 37 CFR § 5.15.  Filers can now make use of ePCT to generate a ZIP file for use in uploading to EFS-Web, secure in the knowledge that their FFL makes it okay to do so.  (This assumes that the subject matter of the to-be-filed PCT application does not go beyond the subject matter covered by the FFL.)

But most importantly, the USPTO did the right thing for ePCT.  The USPTO walked back the May 6, 2016 Federal Register notice.  Here is the USPTO doing the right thing.  I note that this is “Comment 1”, the very first comment being discussed in the notice.  

Comment 1: While all the written submissions received supported the proposed rule changes, several submitters also requested that the USPTO expressly state, in this final rule, that the warnings set forth in the notice titled Use of WIPO’s ePCT System for Preparing the PCT Request for Filing as Part of an International Application with the USPTO as Receiving Office81 FR 27417 (May 6, 2016) (hereafter “2016 notice”) no longer apply. Those comments explained that such a statement would help in training and outreach efforts to encourage the use of ePCT, which, in turn, would benefit applicants, patent practitioners, and offices.

Response: The USPTO agrees that as a result of this rulemaking, the warning in the 2016 notice regarding exporting subject matter, pursuant to a foreign filing license from the USPTO, into ePCT for preparing an international application for filing with the RO/US no longer applies. However, applicants are cautioned that the warnings in the 2016 notice are still applicable in the limited situations where the applicant either does not have a foreign filing license or would be exporting additional subject matter not included within the scope of the foreign filing license from the USPTO.

USPTO did the right thing.  I am delighted that USPTO did the right thing.  Oh, and not to put too fine a point on it, but I was glad that the USPTO at least obliquely acknowledged why it did the right thing, namely that “several submitters” asked it to do so.  

I have great admiration and respect for the twenty patent practitioners who stuck their necks out, joining me in that comment.  It is those twenty practitioners who made this result possible.

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