theme 3: filing a pct application · pdf file... filing a pct application electronically ......
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Theme 3: Filing a PCT Application Electronically
• Using EFS-Web in RO/US • Using PCT-SAFE in RO/IB
PCT-SAFE (1)
• PCT-SAFE (Secure Applications Filed Electronically) is a software program available from WIPO that aids in the electronic filing process
• The PCT-SAFE system contains:• PCT-SAFE Client
– used to create the PCT request form, attach the application documents, digitally sign the application and filing package and, depending on the RO, transmit application
• PKI Services– industry-recognized digital signatures and security for electronic
data• PCT-SAFE receiving Server
– allows RO to receive electronically filed PCT applications and forward data to RO processing systems
PCT Seminar for SMEs and Independent Inventors - November 2009
PCT-SAFE (2)
• When “US” is selected as the receiving Office – the PCT-SAFE software can only be used in PCT-EASY mode to
prepare the request form as a character-coded XML document and save it as a “PCTEASY.zip” file
• When “IB” is selected as the receiving Office– the PCT-SAFE software can be used in fully electronic mode to
prepare the request form as a character-coded XML document, attach application documents (e.g. in PDF format), sign and securely transmit the application to the RO/IB
– the application documents may also be prepared in XML format using the PCT-SAFE or other means and attached to the request form generated using the PCT-SAFE Client
• PCT-SAFE software is available free of charge from WIPO
E-filing of international applications in the RO/US (1)
• Applicants may file international applications in the RO/US using EFS-Web
• EFS-Web is a patent application and document submission solution that uses standard web-based screens and prompts to enable submission of a PDF document directly to the USPTO
• Applicants will receive an acknowledgement receipt with the dateand time of the submission and critical data including the application number
• EFS-Web has been designed to integrate with the USPTO’s Private Patent Application Information Retrieval (PAIR) system
• Industry standard PDF files are required for submission to EFS-Web
PCT Seminar for SMEs and Independent Inventors - November 2009
E-filing of international applications in the RO/US (2)
• EFS-Web – does NOT accept the description or claims in XML format– does accept the request form in character-coded XML format
prepared using PCT-SAFE in PCT-EASY mode and submitted as part of the PCTEASY.zip file
• International applications may be filed by – registered users, that is, users that have a customer number and
digital certificate for secure communication with the USPTO or someone under the authority of the certificate holder; or
– unregistered users• International applications submitted by registered users via EFS-Web
are now immediately viewable in Private PAIR• Fees may be paid at the time of filing using a deposit account, electronic
funds transfer or credit card
How to become a register user
• Anyone can become a registered user by – obtaining a Customer Number to ensure that only you can
access the information on your applications prior to publication– and then obtaining a Digital Certificate, also known as a Public
Key Infrastructure (PKI) certificate, which is issued by the USPTO to registered patent attorneys, registered patent agents, independent inventors, and limited recognition practitioners
• Additional information is available at http://www.uspto.gov/patents/process/file/efs/guidance/index.jsp
PCT Seminar for SMEs and Independent Inventors - November 2009
The PCT request form for e-filing in the RO/US
• Applicants may prepare the PCT request using – PCT-SAFE in the PCT-EASY mode (for details, see
http://www.wipo.int/pctsafe/en/support/guides/pdf/us_e_easy_v3.pdf)or
– any means that creates a PDF version of the PCT request, for example,
• by scanning a paper copy of the request form• by completing an “editable” version of the request form
PCT-SAFE validation function (automatic formality check)
“Traffic lights” assist in completing the request form data:Red light: missing indications mandatory for according an international filing dateRed light with X: incomplete or erroneous indications also mandatory for according an international filing date or other obvious errorYellow light: missing indications, the omission of which could prompt further communication from the RO (for example, invitation to correct defects)Yellow light with !: incomplete or erroneous indications that could prompt further communication from the ROGreen light: no indication required but applicant should evaluate the needto make such an indicationGreen light with ?: a reminder questioning the need for indications or verificationGreen light with : the indications appear to be in order
PCT Seminar for SMEs and Independent Inventors - November 2009
Using PCT-SAFE to prepare a request form
PCT-SAFE File Manager
Open the PCT/RO/101 Request template to begin
PCT Seminar for SMEs and Independent Inventors - November 2009
Enter the language and file reference number
Request: choose RO and ISA; enter title of the invention
States: exclude designation of DE, JP, KR; indicate data where IA is to be treated as US continuation or continuation-in-part
Names: insert data for applicants, applicant/inventors, agents
Priority: insert priority application data
Biology: use where deposited biological material and inclusion of sequencelisting
PCT-SAFE Tabs
Declarations: enter data for declarations submitted as part of the request form
Contents: indicate number of sheet making up the IA; mark box for EFS-Web filing; calculate total sheets; indicate items accompanying the IA
Fees: software calculates total fees payable
Payment: indicate mode of payment
Annotate: contains the validation log with outstanding validation messages; submission data; remarks
PCT Seminar for SMEs and Independent Inventors - November 2009
Choose“US” from dropdownmenu
Using PCT-SAFE for EFS-Web filing in RO/US
Mark EFS-Web box in order to insert s-signatures and save the PCTEASY.zip file on user’s hard drivefor submission via EFS-Web
When “US” is indicated as the receiving Office, EFS-Web box appears under the Contents tab
PCT Seminar for SMEs and Independent Inventors - November 2009
Signing the PCT request and fee calculation sheet
• PCT-SAFE allows those applicants filing via EFS-Web to electronically sign the PCT request with an S-signature as provided by 37 CFR 1.4(d)(2) including– the signature box – the US declaration of inventorship sheet of the request and – fee calculation sheet
• The RO/US will issue an Invitation to Correct Defects if the PCTrequest is not signed
• Applicant may also “wet sign” a print out of the request and the fee calculation sheet and file each copy as a separate document
PCTEASY.zip File
PCT Seminar for SMEs and Independent Inventors - November 2009
UserAccesses USPTO
Portal
UserAccesses USPTO
Portal
UserAccesses USPTO
Portal
Access EFS-WebAs Unregistered
Filer
bAccess EFS-WebAs Unregistered
Filer
Access EFS-WebAs Unregistered
Filer
Authenticateas
RegisteredFiler
A th ti tAuthenticateas
RegisteredFiler
Authenticateas
RegisteredFiler
ChooseInternational Application
Filing
ChooseInternational Application
Filing
ChooseInternational Application
Filing
Attach PCT-EASY.ZIP File or
Form RO 101
YAttach PCT-EASY.ZIP File or
Form RO 101
Attach PCT-EASY.ZIP File or
Form RO 101
and
Review AttachedFiles
Review AttachedFiles
Review AttachedFiles
Calculate Fees(Optional)
sCalculate Fees(Optional)
Calculate Fees(Optional)
Submit and PayReceive PCT number
immediatelyr
Submit and PayReceive PCT number
immediately
Submit and PayReceive PCT number
immediately
EFS-Web PCT filing overview
specification (i.e., description),claims, abstract, and any drawingsas pdf files
Using PCT-SAFE in combination with EFS-Web for filing to RO/US
Prepare and sign request form
PCTEASY.zip
Save the request as PCTEASY.zipfile
Upload to EFS-Web
PCT Seminar for SMEs and Independent Inventors - November 2009
Resources on e-filing in the RO/US
• Applicants are advised to read the information on e-filing requirements posted on the USPTO’s Electronic Business Center home page at http://www.uspto.gov/ebc/indexebc.html
• Applicants can call the Electronic Business Center at the USPTO for technical assistance at (866) 217-9197 (toll-free) or (571) 272-4100 from 6 AM to Midnight, Eastern Time, Monday – Friday
Electronic filing in RO/IB
• Applicants may prepare the text (“single specification”) and drawings in PDF format and attach them to the request form, prepared using the PCT-SAFE Client in fully electronic mode
• Applicants may prepare the entire international application in XML format using PCT-SAFE software
• The application can be – electronically signed with a WIPO digital certificate– transmitted via secure Internet connection or on physical
medium
PCT Seminar for SMEs and Independent Inventors - November 2009
Using PCT-SAFE:obtain a digital certificate
Request for a digital certificate from a Certification Authority (CA) recognized by RO
CA(WIPO Customer CA or other recognized CA)
Digital certificate issued by the CA and stored on user’s computer
Digital certificate
010101010101010101010
Signature
Using PCT-SAFE: submit fully electronic application to RO/IB
+ Image file attachments (e.g. PDF, tiff)
orxml application body
document
ReceivingOffice
OR
010101010101010101010
Signature
PCT Seminar for SMEs and Independent Inventors - November 2009
Fee reductions for electronic filing
• International application filed electronically, the request not being in character coded format (in image format, for example PDF) CHF 100 = $89 (applicable in RO/US but not in RO/IB)
• International application filed electronically, the request being in character-coded formatCHF 200 = $178 (applicable in RO/US and RO/IB)
• International application filed electronically, the request, description, claims and abstract being in character-coded format (not applicable in RO/US but applicable in RO/IB)CHF 300 = $267
• Applicants who do not file electronically are entitled to CHF 100 = $89 reduction where the application is filed on paper and includes:– a paper printout of the request prepared using PCT-EASY and– the PCT-EASY request and abstract in character-coded format
on physical medium
How to obtain PCT-SAFE
• PCT-SAFE Client– download from the PCT-SAFE web site
http://www.wipo.int/pctsafe/en/download/download_client.htm– CD installation from PCT-SAFE Help Desk
• WIPO CA digital certificate– obtain through the PCT-SAFE web site
http://www.wipo.int/pct-safe/en/certificates.htm• Cost
– free of charge• Supporting Documentation
– user guides and e-tutorials available on web site and installation CDhttp://www.wipo.int/pct-safe/en/support/user_documentation.htm
PCT Seminar for SMEs and Independent Inventors - November 2009
PCT-SAFE tutorialhttp://www.wipo.int/pct-safe/en/support/elearning/pct_client/mainmenu.htm
Further information on PCT-SAFEPCT-SAFE Help DeskWorld Intellectual Property Organization34, chemin des ColombettesCH-1211 Geneva 20, Switzerland
Tel: (41 22) 338 9523Fax: (41 22) 338 8040E-mail: [email protected]: http://www.wipo.int/pct-safe
PCT Seminar for SMEs and Independent Inventors - November 2009