A member of the PCT listserv asked:
On a US application filed yesterday with non-US inventors (no US assignee) and a PCT filing deadline of today, we filed through the USPTO and got a PCT application number, we just could not upload it as a PCT-Safe Zip file. The USPTO PCT Helpline said it was okay to file through the USPTO, just a $240 transmittal charge. We uploaded the PCT-101 request as a separate document. Will this be enough to secure a PCT filing date?
The answer is “maybe yes”, depending on the detailed situation.
The writer did not mention where the applicant or applicants reside or where they are citizens, other than to say that the inventors (who I would guess were also listed as applicants) were “non-US”. Consider what would happen if the applicants are citizens and domiciliaries only of Argentina. This would be a big problem since Argentina does not belong to the PCT. It might well turn out that the purported PCT application was not actually a PCT application at all.
But let’s imagine that at least one of the applicants is a citizen or domiciliary of a country that does belong to the PCT. In that case (assuming that other required elements are present, such a description and a claim and maybe drawings) then it may well turn out that the filer did in fact file a PCT application.
The next question would be whether the Receiving Office at the USPTO is “competent” to be the Receiving Office for this PCT application. To be “competent”, at least one applicant would need to be a resident or domiciliary of the United States. On this set of facts, it sounds like probably the RO/US is not “competent” to be the RO.
Years ago the way the PCT rules worked was that filing in a non-competent RO was the same thing as not filing a PCT application at all. But some years ago the PCT rules were changed to save this kind of filing. Nowadays if an RO receives a PCT application for which it is not “competent”, the RO will make note of the date that the PCT application was filed, and will forward the the PCT application to the Receiving Office of the International Bureau (RO/IB) with a note of the filing date. The RO/IB will honor the filing date reported to it by the first (non-competent) RO.
The sequence of events for the filer will probably run like this:
- Filer already received a US-type PCT application number, e.g. PCT/US2015/061234, on August 3.
- RO/US reviews the Request and determines that it lacks competence.
- RO/US mails a letter to the filer indicating that it lacks competence.
- If filer has not already done so, filer will need to pay the “transmittal fee” to the RO/US. For a large entity this is $240 (consistent with the fee mentioned by the filer).
- RO/US carries out a national security review.
- Assuming that RO/US grants an FFL (foreign filing license) then RO/US passes the PCT application to RO/IB.
- RO/IB looks to see if there is at least one applicant having a residence or domicile in a PCT country. If the filer is fortunate, the answer is “yes”.
- RO/IB assigns a new application number, e.g. PCT/IB2015/071234, to the application, and gives it a filing date of August 3.
- RO/IB mails a letter to the filer indicating the application number and filing date.
- RO/IB mails a letter to the filer indicating that the filer is not permitted to act as the “agent”, and instead the filer’s status is demoted to a mere “address for correspondence”.
- The filer will also need to pay the “transmittal fee” to the RO/IB. This will be $104. (A total of two “transmittal fees” will need to be paid.)
- If the other fees (international filing fee, search fee, excess page fees) have not yet been paid, they will need to be paid.
- Assuming the Request was signed by the filer, then RO/IB will have no choice but to treat the Request as not having been signed. It will be necessary to obtain a signature on the Request from the applicant and to provide that signature to the RO/IB.
- Any and all later papers filed during the international phase will need to be signed by the applicant, and not by the (former) agent.
Assuming that the invention was not made in the US, then the filer could have saved $240 by filing directly in RO/IB rather than what the filer actually did, which was to file in RO/US. This would also have saved the filer the delay and uncertainties connected with steps 1-6 just mentioned.
We see from the filer’s question that the filer did not attach a “zip” file to the EFS-Web submission. Attaching a “zip” file (or otherwise providing bibliographic data electronically) normally reduces the international filing fee by $104. This opportunity for a $104 fee reduction in the international filing fee also was lost in this filing approach. Filing directly in RO/IB thus would likely have saved at least $344 ($240 plus $104).
The direct filing in RO/IB could have been done by fax (good), or by PCT-SAFE FM (better), or by ePCT (best).
Having said all of this, it sounds as though, if all went well, the filer did manage to avoid failing to get a PCT filing date.
From the information provided by the filer, it is not possible to work out which ISA (International Searching Authority) or ISAs are available for this PCT application. But this is the sort of thing that can be straightened out later.