Why the smart US filers are filing in RO/IB this weekend

Many US patent filers always file their PCT applications in RO/US, and many US patent filers don’t know how to file a PCT application anywhere else (such as RO/IB).  But during the four-day period from March 14 to March 17, smart US patent filers are filing their PCT applications in RO/IB using ePCT rather than RO/US using EFS-Web.

When you file anything in EFS-Web, your normal next step of course is to look in Private PAIR to see if everything that is supposed to be in the USPTO file is really there. Things can go wrong — “smooshed” figures that were resized and distorted by USPTO’s systems, figures that are unreadable due to half-toning imposed by USPTO’s systems. A filer might accidentally upload the penultimate version of a patent application rather than the final version.  Two pages might have stuck together in the scanner so that one of the pages is missing in the e-filed document.  The prudent filer always checks in Private PAIR to see if something went wrong so that the case can be refiled (or augmented) later the same day to avoid loss of a filing date.

But there is a discussion right now in the EFS-Web listserv (which you should probably join if you have not already done so) started by a listserv member who filed something yesterday (Friday) in EFS-Web and even now, twenty-four hours later (Saturday), she is not able to see her application in Private PAIR.

A second alert listserv member recounted a filing this week in EFS-Web that was not visible in Private PAIR and who heard from the EBC that it might take five days for the filing to be visible in Private PAIR.

A third alert listserv member pointed out the likely explanation for the problem in the USPTO systems — there is an enormous volume of filings being done in EFS-Web this weekend.  These are the filings that are being rushed to the USPTO at the last minute based upon the enormous number of patent applications that were filed in USPTO in the days leading up to March 15, 2013.  (Filers rushed to file before March 16, 2013 so as to avoid the FITF law change of AIA.)  Now the one-year anniversary is upon us and of course this is leading to an enormous number of filings.

The crunch filings now (filed in the range of about March 14 to March 17, 2014) fall into two categories.  The first category is US non-provisional patent applications claiming domestic benefit from US provisionals that were filed a year ago.  The second category is international (PCT) patent applications claiming priority from US applications (provisional and non-provisional) that were filed a year ago.

If you are filing a US non-provisional application this weekend, you are stuck.  You have no choice but to file in EFS-Web.  And who knows how long you will have to wait (days, perhaps) before you will be able to see your application in Private PAIR, if your experience is anything like that of the listserv member who posted today about a twenty-four hour delay.

But the important thing to think about is that if you are filing a PCT application this weekend, the smart thing to do is to file in RO/IB (using ePCT) rather than in RO/US (using EFS-Web).

If you file in RO/US using EFS-Web, there’s no telling how long you might have to wait to see your application in Private PAIR, due to the crunch.

If on the other hand you do the smart thing and file your PCT application in RO/IB using ePCT, you will be able to see exactly what the Receiving Office received from you, by looking in ePCT.  It will be visible instantly in ePCT.

Our firm filed several PCT applications yesterday and today in RO/IB using ePCT, and each of them was visible instantly in ePCT.  We were able to check to make sure that everything got filed correctly.

Of course if your invention was made in the US, you will need to make sure you have an FFL (foreign filing license) from USPTO prior to the filing in RO/IB.  But you probably already have an FFL that USPTO granted for your invention in the parent case, the case that you filed a year ago.

Long before this crunch time of March 14-17, 2014 arrived, there were good and important reasons why every filer needed to know how to use ePCT and should already have gotten set up to use ePCT.  And long before this crunch time of March 14-17, 2014 arrived, there were real-life situations where it was better or smarter for a US filer to file in RO/IB rather than RO/US.

If you have some PCTs to file during this crunch period, and if you know how to use ePCT, check your FFL situation and use ePCT.  You will be able to avoid the sluggishness of USPTO’s systems during this crunch period and you will be able to check the filed application in ePCT right away.

And if you don’t know how to use ePCT, well, let this crunch period at USPTO serve as your wake-up call that you cannot postpone any longer learning how to use ePCT and getting set up to use ePCT.

6 Replies to “Why the smart US filers are filing in RO/IB this weekend”

  1. I have one application filed five (5) days ago (Monday, 3/10) that I cannot see yet in Private PAIR.
    Problem, too, b/c I need to file a MICRO Certification for that client.

    Oddly, another one, filed the day before, I could see by searching on the Appl. No. within about 1 hour of filing it
    (which was a symptom of things to come, b/c the normal delay is about 15 min.). Still can’t see it in Pvt. PAIR.
    Guess that just about pins down when the wheels fell off.

    I’ve now filed 3 more applications since then, none of which I can see yet in Private PAIR.
    One of those also is a MICRO.
    Another one of those is a PCT, filed today, 3/15/14, which, of course, I cannot see yet.

    And, I need to file IDS’s in all of those. Can’t.
    Can’t do anything until they’re visible in PAIR, b/c EFS Web won’t recognize the Appl. No.

    By EOD Monday, I’ll have seven (7) that I won’t be able to see.

    And, it’s more than a little annoying that the USPTO’s web site keeps yammering on about how the Application Number must have been typed in wrong.

    1. You describe the cases where EFS-Web refuses to let you file a follow-on document because the case is not yet visible in Private PAIR. Yes it is a big problem when this happens. Keep in mind that in a pinch you can fax the documents to the Central Fax Number at 571-273-8300. This is of course not as good as e-filing but sometimes ya gotta do what ya gotta do.

  2. I’ve been filing at RO/IB using ePCT since the middle of last year. It is almost an enjoyable experience and has made the last week go so much better. ePCT is years ahead of EFS-Web and Private PAIR in terms of user-friendliness and functionality. Also, the ePCT team is a great group of people who are very responsive to questions. I hope it doesn’t change as more people take advantage of this service.

    One of the only disadvantages with filing at RO/IB I can think of is that if you’re on a deadline you have to keep track of when it is midnight in Geneva, but there’s even a time display on ePCT to help with that.

    Another reason for using RO/IB over RO/US is that there is no charge for restoration of priority if you need it.

  3. I’ve been having this problem too (for almost two weeks), and I noticed that if you file an ADS then the case doesn’t appear but if you do not file an ADS then the case appears in five minutes as always. I called the EBC and they confirmed that there is a glitch in the system and that filing an ADS causes the problem (somehow it causes the application to not be associated with your customer number). So lately I’ve been filing cases without an ADS and then following up the same day with an ADS. Note, do not try this if you wish to check the “do not publish” box in the ADS, a follow up on the same day won’t be effective.

  4. While this is certainly an option to avoid problems with EFS-Web filings over this ‘crunch time’, before a US filer can use ePCT to file a PCT in RO/IB, he/she must set up a user account at WIPO, request a WIPO digital certificate and install it in the web Browser. Yes, it’s easy to set up a User account but the information in your post didn’t mention that WIPO digital certificates are only issued on business days. Note that US digital certificates cannot be used for ePCT filings although digital certificates issued by certain foreign offices are. And then there’s the foreign filing license matter for inventions made in the US. I’m willing to bet that there are a number of PCTs based on pre-FITF filings that contain additional matter.

    1. Carol’s quite right on all points. Taking them one by one … First, if you only for the first time over the weekend decided to start using ePCT to file a PCT patent application, you would not succeed because you need a WIPO crypto certificate to do it, and WIPO crypto certificates are only given out on business days. This means the practitioner who wants to be prepared for some future crunch period should get signed up for ePCT now before the next crunch. Second, yes if your invention was made in the US you need to consider whether the FFL which USPTO granted on your priority application is an FFL that covers everything in the PCT that you are planning to e-file in RO/IB. The rule is not that the two applications need to be identical, but that the substantive content of the second application be no greater than that of the first application.

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