IP Australia to Accept International Applications Online via ePCT

From 14 April 2014 it will be possible to file international applications under the Patent Cooperation Treaty (PCT), designating IP Australia as the Receiving Office, via the World Intellectual Property Organization (WIPO) ePCT online filing service.

Currently, electronic filing of PCT applications with IP Australia is possible using the PCT-SAFE system.  This requires documents and filing forms to be prepared using a dedicated software package installed on the user’s PC.  The software creates a file that is then uploaded to IP Australia’s website to lodge the application.  The PCT-SAFE software includes useful features, such as the ability to store applicant details for future re-use in subsequent applications, but all of the stored data is confined to the computer system on which the software is installed (although there are export/import functions provided so that this data can be moved).

WIPO’s ePCT system takes all of the PCT-SAFE functionality, and more, online so that it is accessible from anywhere a web browser can be found (subject to possession of a WIPO digital certificate, of which more below). 

The ePCT system also retains applicant and inventor details (names, addresses, nationality etc) so that they do not need to be re-entered every time they are needed.  It allows partially complete applications to be saved.  Once an application has been filed, it remains on the user’s list of applications, and can easily be accessed to obtain up-to-date status information, and to submit further documentation for processing, such as changes of applicant, inventor or agent names or addresses.  The creator or owner of an application filed via ePCT can assign roles to other users, so that various access rights can be made available to different people, e.g. members of an IP management team.

IP Australia has stated that ePCT will be its preferred channel for filing of PCT applications and associated requests, from 14 April 2014.  Clients who are currently using PCT-SAFE or more traditional (i.e. paper) filing methods will want to look at switching over to ePCT as soon as possible.

Why Use ePCT?

PCT Receiving Offices

A ‘Receiving Office’ (RO) is an authority with which a PCT application may be filed.  Most of the national patent offices of PCT member countries act as an RO for their residents and/or citizens.

Each RO is generally ‘competent’ (which is a fancy way of saying ‘permitted’, rather than being any comment on its actual abilities) to accept applications only from certain applicants.  Most commonly, this is limited to applicants that are either resident in, or citizens of, the country of the RO.

Thus, IP Australia is ‘competent’ as RO only for PCT applications which have at least one Australian applicant.  This may be an individual who is resident in, or a citizen of, Australia, or a company which is registered in, or carrying on business from an address in, Australia.

There are some offices that act as RO on behalf of other countries, for example where those countries do not have the facilities to receive PCT applications.

Additionally, the International Bureau (IB), at WIPO, is able to act as an RO for any applicant which is entitled to file a PCT application.  However, the role of the IB is limited to receiving applications.  Once the application has been received, it must be transferred to a ‘competent’ office for further processing. 

So if an Australian applicant files with the IB, the application will subsequently be transmitted to IP Australia.  This mechanism already enables Australian applicants to use ePCT for filing of international applications.  However, from 14 April 2014, it will be possible to file via ePCT, and name IP Australia as the RO, enabling the applicable Australian fees to be paid directly in Australian dollars.

I know that ePCT is an effective system, because I have actually used it.  An ePCT pilot has been available for some time, enabling PCT applications to be filed via the International Bureau (IB) at WIPO (see the inset for more on the PCT and role of Receiving Offices).  I have used this pilot system to file applications for clients who are not entitled to file with the Australian receiving office, because their official country of residence/nationality is not Australia.

I am also aware that Australian applicants have sometimes been filing via the IB, even though they are entitled to file with IP Australia, because fees are paid at the IB in Swiss Francs and, due to fluctuations in exchange rates and other factors, it can be slightly cheaper. 

However, once designation of IP Australia as Receiving Office becomes available, it will be possible to select and pay the appropriate PCT application fees in Australian dollars.

There are a few features of the ePCT system that I have found to be quite useful.  The ability to save an incomplete application, log out of the system, and come back to complete it later can be very handy.  For example, if nearly all of the documents and information necessary for filing are available, but you are just waiting on final inventor details, or formal drawings, it is possible to complete all of the other parts of the application so that it is nearly ready to go when the missing details come in.

The fact that the system maintains address books with details of applicants, inventors, attorneys/agents etc is also useful.  Address books can be shared between users, and the contents and can exported and imported in CSV (i.e. comma-separated value) format.  Given that this is a very simple and widespread tex format, I presume (though I have not confirmed) that existing address books managed within the PCT-SAFE software can also be imported into ePCT.

One or more email addresses can be provided to which notifications regarding the PCT application will be sent.  This makes it easy to have notices sent to an assistant, paralegal, or other support staff, if that is the way your organisation handles the administrative processing of applications.

Most of the components of the application are checked automatically for completeness, and the ePCT system prevents filing until all details that can be checked automatically are completed correctly.  Some parts of the application cannot be checked electronically (e.g. the system has no way to confirm that drawings meet all of the formal requirements).  There is a delay of a couple of days after filing before receipt of the application is finally confirmed, presumably to enable a final manual formalities check to be completed.  Assuming all is in order, the official filing date is the day on which the ePCT application was submitted.

A nice touch is the ability to generate a preliminary ‘mock-up’ of the PCT cover page, which is not otherwise available until the application is published at around 18 months from the priority date.  This page provides a handy and compact summary of all the application details.

Making Payments

While ePCT calculates the fees due at filing of the application, payment details (at least when paying by credit card) are not provided directly through the ePCT filing interface.  Instead, the system sends an email to the electronic ‘owner’ of the application a couple of days later, after the new application has been fully processed and checked for compliance.

The payment request email contains a unique link to a payment form, where credit card details can be entered in order to complete payment for the application.  Anybody with the link can make the payment – it is not necessary to be logged into the ePCT system, or to be the same person who actually submitted the application.  This is very handy if what you want to do is send the payment request to somebody in your accounts department to complete the payment!

All in all, I found this system to be simple and effective.  I particularly like the fact that it allows the person responsible for filing to focus on the application details, particularly when up against a filing deadline, leaving aside the issue of money until a few days later.

Digital Certificates

To use the ePCT filing service (and other ‘ePCT private services’) it is necessary to have a WIPO digital certificate.  The certificate must be installed on each computer from which the ePCT services are to be accessed and, in combination with a WIPO login, enables each user to be uniquely identified by the system.

The idea is that each individual has a certificate, and that it should not be shared with other users.

A WIPO account can be created by for free, and can be used to request a digital certificate.  Additional personal details are required for the certificate, which are manually reviewed before a certificate is generated.  This process can therefore take up to 24 hours.  I found it to be straightforward, and my certificate was issued overnight (Australian time).

It is necessary to use the same computer and browser for requesting and retrieving the certificate, however once it has been installed on one system, it can be exported and then installed for use on other computers.  This is typically done via the web browser, so see the relevant help files for your preferred browser!  The exported certificate is itself password protected, and can be carried around on a USB drive, for example.

The requirement for a digital certificate is slightly inconvenient, but is worth it for the additional level of security it provides.

Incidentally, WIPO indicates that ePCT supports Mozilla Firefox 3.6+ (recommended) and Internet Explorer 7+.  I would recommend using one of these browsers to obtain a digital certificate, however once the certificate is installed I have found ePCT to work perfectly well with Chrome.  Be warned, however, that WIPO does not provide assistance for problems encountered using an ‘unsupported’ browser.  (Frankly, however, I would have thought their greatest headache would be supporting IE 7 and 8!)

Conclusion

It is clear that ePCT is the future of PCT filing and administration.  It is a good system, and I have so far not encountered any problems using it.  I have confidently filed via ePCT when up against a deadline!

I suggest that anybody involved in the filing of PCT applications should be looking to move to ePCT sooner rather than later.  I would not be surprised to see IP Australia close down other filing channels in the not-too-distant future.

Tags: Australia, International treaties, Patent Office, WIPO