When you file a PCT application in a Receiving Office other than the RO/IB, the Receiving Office will consider whether it is “competent” to handle that particular PCT application. If the RO determines that it is non-competent, it will transfer the application to the RO/IB for further processing. (The application does not lose its filing date; the RO/IB will honor the filing date that had been given to the application by the first RO.)
Each RO determines its own conditions for “competency”. In the case of RO/US, the two ways that the RO might decide that it lacks competency as to a particular PCT application are:
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- no applicant identified in the Request is either a resident or citizen of the US, or
- the application is not in the English language.
Either of these situations will prompt RO/US to transfer a particular PCT application to the RO/IB.
But what, the long-suffering blog reader may ask at this point, does all of this have to do with “lorem ipsum“? Yes, those are today’s fun questions — the interesting question “what is lorem ipsum?” and the even more interesting question “what does lorem ipsum have to do with Receiving Office procedure under the Patent Cooperation Treaty?”
To make sense of this, we start by explaining what “lorem ipsum” is.
Lorem ipsum (Wikipedia article) is the name for a placeholder text commonly used in the world of web design and graphic design to demonstrate the visual form of a document without relying on meaningful content. It’s not just any old text. It turns out that everybody uses the same placeholder text.
So for example if you are a WordPress web designer and you look around at the various “themes” that you might use for a particular web site, you will find that the theme designers often use this lorem ipsum text (see example at right) as the placeholder in the them. Later if you choose to make use of that theme in your WordPress site, you would replace the lorem ipsum text with your own content.
This text first came to be used in the 1960s and then came to be very widely used in the 1980s in the desktop publishing software Aldus PageMaker. Somebody who knows a lot of Latin searched around and it turns out the text is drawn from a first-century work by Cicero called De finibus bonorum et malorum.
Okay, says the by-now-exhausted blog reader, so now that we know what lorem ipsum is, why does it have anything to do with Receiving Office procedure under the Patent Cooperation Treaty?
The answer, as I learned from Mike Neas, who is a very nice person at the USPTO, is that from time to time a person who is drafting a PCT patent application will use some lorem ipsum text in the patent application. A typical place where this will appear is in one of the figures, perhaps showing how the invention can be employed to manipulate text as rendered on a display screen. Or maybe the invention relates to machine translation and the text appears in a figure as an example of the foreign-language text that has not yet been translated.
In any of these situations, the RO/US will likely find itself to be “non-competent” as to that particular PCT patent application. As mentioned above, this is not fatal to the application. The RO/IB, upon receiving the application from the RO/US, will give credit to the filing date that the RO/US had given to the application.
But the US practitioner whose application makes use of lorem ipsum text (or any other non-English text) who wishes to avoid the potential embarrassment of having to explain to a client why the application number has changed, and why the transfer happened, might wish to take either of two precautions:
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- let the client know, in advance, that this transfer might happen, or
- file the application directly in RO/IB rather than in RO/US.
Of course whenever one files in RO/IB one must keep in mind the usual concerns. For example if the invention was made in the US one will want to make sure that one has a Foreign Filing License before carrying out the direct filing in RO/IB. And one will wish to keep in mind the time of day at which the application will need to be filed so as to get filed prior to midnight in Switzerland.
I mentioned that the transfer of a PCT application from a non-competent Receiving Office to the RO/IB is usually not fatal to the application. I mentioned that the RO/IB will honor the filing date that had been given to the PCT application by the original Receiving Office (the office that had determined itself to be non-competent for one reason or another and thus transferred the application to RO/IB).
But there is one circumstance where the circumstance prompting the transfer to the RO/IB will be fatal to the application. It is a circumstance that I have not yet mentioned in this blog article. What is that circumstance? The first reader to post the correct answer in a comment below will be applauded both for high PCT geekdom and for somehow having kept from falling asleep despite the length of this blog article.
Oh and then I guess the natural followup question is, what is the thing that a practitioner could do as part of the PCT filing process to reduce to a minimum, indeed likely to eliminate the risk of, screwing up in the way that we are talking about here? The thing that a practitioner could do as part of the PCT filing process to avoid having this transfer happen and then learning that the PCT application was fatally flawed? The answer, of course, is to use PCT-SAFE software or, better, ePCT software to generate the PCT Request. The software carries out validations that will warn the practitioner about this potentially fatal circumstance that some alert reader will post in a comment below.
I suppose a transfer to RO/IB would only be fatal because of the filing date. The RO/IB application will maintain the filing date of the non-competent RO.
But, what if the date in question would only be “ok” for precisely that RO but not for the RO/IB, because of excluded days? Because the Convention deadline falls on an excluded day in the non-competent RO and can thus be filed on the following working day, but at the IB it would have been a regular working day, and a later filing date would therefore be potentially fatal (unless restoration is requested & granted).
Wow this is clever! I would never have thought of this answer. So for example …
Priority application was filed a year ago. Today is a year later. Today happens to be Fourth of July (a federal holiday in the US). I sit around and wait until tomorrow the fifth of July to file my PCT application in RO/US. No problem, right, because blah blah blah excluded day blah blah.
Except RO/US turns out not to have been competent. Maybe there was some lorem ipsum in the application. Or maybe there was not a US citizen or US resident anywhere to be found in the applicant list. For some reason or another, RO/US is not competent. Then what? RO/US date-stamps the application, ships it off to RO/IB, and everybody relaxes. No problem. Except, Fourth of July is not a holiday in Switzerland. Does the IB mail out Form PCT/RO/110 notifying the applicant that they missed the 12 months? I don’t know actually whether they do nor not. Maybe the IB says “hey this case came to us from RO/US and in RO/US it would have been within the 12 months because of an excluded day so we won’t mail out Form PCT/RO/110.” But if the IB does not mail out Form PCT/RO/110, if the applicant enters the national phase anywhere in the world and gets a patent, then TYFNIL the issue could nonetheless be raised by an accused infringer.
The IB will bounce the application if the named Applicant is not a resident or national of a PCT contracting state.
Yes this is exactly the answer I was fishing for. Or saying it slightly differently, that if you run your finger down the applicant list, nowhere on the list is any applicant that is a resident of a PCT contracting state and nowhere on the list is any applicant that is a national of a PCT contracting state.
And of course if the practitioner is using PCT-SAFE or ePCT, this category of malpractice would be guarded against because the software would catch it in the validation.
But why does the RO/US find itself “non-competent” with respect to a PCT application filed by a US resident/national applicant that is entirely in English, except for a small piece of lorem ipsum placeholder text in one of the figures? The answer, I suppose, appears in footnote #3 of PCT Receiving Office Guideline #57: “If the international application is filed with the United States Patent and Trademark Office as receiving Office, all elements of the international application other than any sequence listing part of the description (that is, request, description other than any sequence listing part thereof, claims, abstract, any text matter of the drawings) must be in English (see Rule 20.1(c) and (d)).” See http://www.wipo.int/pct/en/texts/ro/ro55_58.html and also see 37 CFR 1.84(p)(2) [Standards for drawings/Numbers, letters, and reference characters] “The English alphabet must be used for letters, except where another alphabet is customarily used, such as the Greek alphabet to indicate angles, wavelengths, and mathematical formulas.”
Mike Neas is a gentleman and a scholar. And a judge of fine wines. I’m proud to call him my friend.