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.
I thought I learned at the roving PCT 1 day seminar that being a USPTO registered practioner does not give me the ability to file a PCT application with zero U.S. inventors and applicants.
Yes you are quite correct. See point numbers 10 and 13 and 14 mentioned in the blog post.
Suppose the inventors are non US residents/nationals but the Assignee and the Applicant is a US Corporation incorporated in Delaware. I’m looking at PCT Rule 18.1 to figure out if the “Applicant” is a US national/resident. I’m not sure if Rule 18.1(b) has two conjunctive elements or not. Any ideas on this?
Please join the PCT Listserv if you have not already done so. Then please post this question on the listserv. I bet you will get some helpful answer or answers on the listserv.
Thanks. Will do so!
Carl, out of curiosity, has there ever been an example of when the USPTO would not issue a FFL under the above circumstances? (And if so, what happens from there?)
Yes it does occasionally happen that RO/US finds that it is unable to grant an FFL. When this happens, the RO/US does not transmit the application to RO/IB and if this drags on too long, the eventual result is that the applicant loses any chance of obtaining patent rights outside of the US through the PCT process.
This is yet another reason why (if the invention had originally been made outside of the US) that the filer ought to have e-filed directly at RO/IB. A filing directly at RO/IB would not have been at risk in this way (at risk of losing all non-US patent rights due to inability of RO/US to grant an FFL).
Even if the invention had been made in the US, the filer might find that the invention was fully described in a priority application that had been filed in the US (in which an FFL had already been granted, either expressly or by passage of the six-month FFL time period). There too the Best Practice would have been to e-file in the RO/IB, for reasons discussed in the main blog article.
14. Unless, of course, you bring into the loop a “local” agent, who must be qualified to act before an Office (other than IB) that would have been a competent RO.
Carl, how would you handle a case where there are US inventors who are obligated to assign to a non-US company. Could you file the PCT in the USRO by identifying the company as an “applicant” and the US inventors as “applicants for the US only” (with a plan to file a change request later that switches them to inventor only), even though 37 CFR 1.42 says that inventors who are under an obligation to assign are not “applicants”?
So, if the US/RO carries out a national security review, and they actually transfer the application outside the US, why do they not issue a foreign filing license? There could be a situation with a US inventor and foreign assignee applicant, so the need for a foreign filing license still exists, right?
If you look through an actual patent file in RO/US, what you will find is that at such time as RO/US determines that it can transmit the record copy to the IB (and the search copy to the ISA), the RO/US also mails a foreign filing license to the applicant.
Thanks. I’ve looked at several, and no such FFL was issued.
In one case, PCT app in RO/US was filed on behalf of a foreign applicant company with a US inventor and a foreign inventor. For reasons discussed in Carl’s post, the application was transmitted to the IB on the basis of the US being not competent as the RO. While the PCT/RO/105 form was duly received and the application documents were transmitted to the IB, there appears to be no actual FFL in the file history or in correspondence from the USPTO.
Is there code, rule, or case law stating that sua sponte transmittal by the USPTO to the IB is a constructive FFL?