Theme 3: Filing a PCT Application Electronically

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1 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

2 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 date and 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

3 EFS-Web E-filing of international applications in the RO/US (2) 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

4 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 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 date Red light with X: incomplete or erroneous indications also mandatory for according an international filing date or other obvious error Yellow 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 RO Green light: no indication required but applicant should evaluate the need to make such an indication Green light with?: a reminder questioning the need for indications or verification Green light with : the indications appear to be in order

5 Using PCT-SAFE to prepare a request form PCT-SAFE File Manager Open the PCT/RO/101 Request template to begin

6 Enter the language and file reference number PCT-SAFE Tabs 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 sequence listing 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

7 Using PCT-SAFE for EFS-Web filing in RO/US Choose US from dropdown menu When US is indicated as the receiving Office, EFS-Web box appears under the Contents tab Mark EFS-Web box in order to insert s- signatures and save the PCTEASY.zip file on user s hard drive for submission via EFS-Web

8 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 PCT request 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

9 EFS-Web PCT filing overview User Accesses USPTO Portal Access EFS-Web b As As Unregistered Filer Authenticate ti t as as Registered Filer Choose International Application Filing Attach PCT-EASY Y.ZIP File or or Form RO 101 and Review Attached Files Calculate Fees s (Optional) Submit and Pay Receive PCT number r immediately specification (i.e., description), claims, abstract, and any drawings as pdf files Using PCT-SAFE in combination with EFS-Web for filing to RO/US Prepare and sign request form Upload to EFS-Web Save the request as PCTEASY.zip file PCTEASY.zip

10 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 Applicants can call the Electronic Business Center at the USPTO for technical assistance at (866) (toll-free) or (571) 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

11 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) Signature Digital certificate Digital certificate issued by the CA and stored on user s computer Using PCT-SAFE: submit fully electronic application to RO/IB + Image file attachments (e.g. PDF, tiff) or xml application body document Signature OR Receiving Office

12 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 format CHF 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 CD installation from PCT-SAFE Help Desk WIPO CA digital certificate obtain through the PCT-SAFE web site Cost free of charge Supporting Documentation user guides and e-tutorials available on web site and installation CD

13 PCT-SAFE tutorial Further information on PCT-SAFE PCT-SAFE Help Desk World Intellectual Property Organization 34, chemin des Colombettes CH-1211 Geneva 20, Switzerland Tel: (41 22) Fax: (41 22) Internet:

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