Okay, folks, we are all sort of reeling from this pesky little problem that right now absolutely every external-facing USPTO system is broken. So for example if you want to try to file a US patent application, you will find that EFS-Web is broken, and you will find that Patentcenter is broken. Oh, and you remember that “contingency” EFS-Web server that was set up in 2014 so that any time the main EFS-Web server was broken, you would still have a way to file US patent applications? Well, that’s broken too.
So what if the kind of patent application you want to file happens to be a PCT application?
Did you think about the fact that there is an e-filing system at the International Bureau? Yeah! The e-filing system at the RO/IB is not broken. It is working fine right now.
Maybe what you want to do right now is feel bad that you missed my November 17 webinar entitled Picking a Receiving Office. In that webinar, I discussed in great detail the pros and cons of filing a PCT application at the USPTO (through EFS-Web or Patentcenter) or filing a PCT application at the IB (through ePCT). And this webinar was CLE accredited! Maybe now you feel bad you missed it? And this webinar was free of charge! Now do you feel bad that you missed it? Well, no need to feel too bad, because although we often do not succeed in recording these webinars, this time somehow we managed to record it. You can see the recording here. Right now if you want to file a PCT application, consider e-filing it at the RO/IB.
Now of course if the invention was made in the US, you are going to need to consider whether you already have a suitable foreign filing license (FFL). Maybe the FFL that got granted in your priority application covers (substantively) the content of the PCT application that you are getting ready to file. Or maybe your invention was not made in the US in which case the whole FFL thing is not relevant.
But the main thing to remind yourself about here is that anybody who is entitled to use the PCT system at all is entitled to use the RO/IB. So there is always the chance that your filing situation might permit use of RO/IB in which case it might not have to be a problem that the various USPTO systems are all broken right now.
2 Replies to “You can still file a PCT application! (Use RO/IB)”
As a European attorney & primarily filing my priority applications for UK applicants via the UKIPO, I find that even using the IB as Receiving Office (via ePCT) I am restricted in my choice of ISA to the EPO. Therefore, I was particularly interested in your section relating to “applicants of convenience” and the possibility that if I could have a US AOC for my PCT applications this may allow me a wider choice in ISAs.
However, I didn’t really understand/know how I could put this into practice as my applicant/s in the priority case would be UK applicants. Presumably, the applicant listed for the countries of interest to my clients would be the UK applicant and I would then add a US AOC as the applicant for a country of no interest to my client (to be dropped at national phase). Is this correct?
This would be very useful for some of my smaller clients, who find the cost of a PCT application + the cost of EPO as ISA prohibitively expensive. Any comments?