[Federal Register Volume 81, Number 88 (Friday, May 6, 2016)]
[Notices]
[Pages 27417-27418]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-10733]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No.: PTO-P-2015-0064]


Use of WIPO's ePCT System for Preparing the PCT Request for 
Filing as Part of an International Application With the USPTO as 
Receiving Office

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (Office or 
USPTO), in its capacity as a PCT Receiving Office (RO/US), will begin 
to accept international applications under the Patent Cooperation 
Treaty (PCT) that are filed electronically with a PCT Request prepared 
in the World Intellectual Property Organization's (WIPO) ePCT system. 
ePCT allows users to generate a zip file containing a validated PCT 
Request; the zip file can then be submitted electronically to the RO/US 
as part of an international application filed using the USPTO's 
electronic filing system (EFS-Web). Because WIPO's ePCT system is web-
based and the servers that support the system are located outside the 
United States, users of ePCT are reminded that the export of subject 
matter abroad pursuant to a foreign filing license from the USPTO is 
limited to purposes related to the filing of foreign applications, 
which include international applications filed in a Receiving Office 
other than the RO/US. A foreign filing license does not authorize the 
export of subject matter into ePCT for generating a PCT Request for 
filing with the RO/US. Persons who are considering the use of WIPO's 
ePCT system for preparation of the PCT Request for filing as part of an 
international application with the RO/US should consider contacting the 
Bureau of Industry and Security (BIS) at the Department of Commerce, 
the Directorate of Defense Trade Controls (DDTC) at the Department of 
State, or the National Nuclear Security Administration (NNSA) at the 
Department of Energy for the appropriate clearances where the 
international application may include technology subject to export 
controls.

DATES: The change in this notice takes effect on June 1, 2016.

FOR FURTHER INFORMATION CONTACT: Michael Neas, Deputy Director 
(telephone (571) 272-3289; electronic mail message 
([email protected])), International Patent Legal Administration, 
Office of International Patent Cooperation.

SUPPLEMENTARY INFORMATION: The USPTO's electronic filing system (EFS-
Web) enables users to electronically file international applications 
under the PCT with the RO/US. EFS-Web currently permits users to submit 
the PCT Request by uploading a zip file created using PCT Secure 
Applications Filed Electronically (PCT-SAFE) software which is made 
available and maintained by WIPO. The zip file from PCT-SAFE contains a 
validated PCT Request and fee calculation sheet in PDF format, which 
are subsequently loaded in the USPTO's Image File Wrapper (IFW). The 
zip file contains additional files that, among other things, allow the 
USPTO and WIPO to auto-load application bibliographic data. All other 
documents and application parts must be prepared and loaded separately 
in EFS-Web for filing of the international application. Submission of 
the zip file from PCT-SAFE at the time of filing the international 
application entitles the applicant to a reduction of the international 
filing fee. Starting on June 1, 2016, in addition to accepting the zip 
files generated by PCT-SAFE, the RO/US will also begin to accept 
international applications filed electronically with zip files created 
by WIPO's ePCT system. ePCT is a web-based service that provides for 
electronic filing of international applications with certain PCT 
Receiving Offices. ePCT also provides for secure electronic access, 
file management, and document submissions for international 
applications held by the International Bureau (IB). The use of ePCT in 
this manner requires the use of a WIPO user account authenticated with 
a WIPO digital certificate. ePCT is accessed via an internet browser on 
the user's system, and all information input into ePCT is stored 
securely on WIPO's servers. Detailed information on ePCT-Filing can be 
found at http://www.wipo.int/export/sites/www/pct/en/epct/pdf/epct_filing_guidelines.pdf.
    Both PCT-SAFE and ePCT include validation features to help users 
properly complete the PCT Request. Since the PCT-SAFE validation can 
only be made against the version of the software installed on the 
user's system, the most up-to-date version of PCT-SAFE is required in 
order to ensure accurate validation. In contrast to PCT-SAFE, 
validation in the ePCT system is made in real time and does not require 
software updates. Furthermore, like PCT-SAFE, the zip file generated by 
ePCT, which contains a PCT Request in

[[Page 27418]]

character coded format, also entitles the applicant to the same 
reduction in international filing fees as indicated in item 4(b) of the 
PCT Schedule of Fees (http://www.wipo.int/pct/en/texts/rules/rtax.htm#_S). The use of the ePCT zip file would still require all 
other documents and application parts to be prepared and loaded 
separately in EFS-Web for filing of the international application.
    By using ePCT, an international application will be associated with 
the user's ePCT account, even before the application is filed, thereby 
allowing users to share access rights with others prior to filing, if 
needed. In addition, after the record copy is received by the IB, the 
application file may be viewed online via ePCT without the need to 
separately request access rights.
    Applicants who are residents and/or nationals of the United States 
and its territories can file international applications directly with 
the Receiving Office of the IB via ePCT or other means, provided that 
any national security provisions have been met prior to filing, 
including obtaining any required foreign filing license. See 37 CFR 
5.11 and MPEP Sec.  140. A foreign filing license does not, however, 
authorize the use of ePCT to prepare the PCT Request and resultant zip 
file for filing, as part of an international application, with the RO/
US. See 37 CFR 5.15 regarding the scope of a foreign filing license. 
Also see Scope of Foreign Filing Licenses, 73 FR 42781 (July 23, 2008) 
(``A foreign filing license from the USPTO does not authorize the 
exporting of subject matter abroad for the preparation of patent 
applications to be filed in the United States.''). Using ePCT to create 
a PCT Request and resulting zip file for later submission to the RO/US 
does not constitute the ``filing of an application in a foreign country 
or to any foreign patent agency or international patent agency'' as 
provided in 37 CFR 5.15(a). Furthermore, an international application 
filed in the RO/US is not a ``foreign application'' within the meaning 
of 37 CFR 5.15(a) or 5.11(b), which authorize the export of subject 
matter abroad. See 37 CFR 5.1(b)(2). See also 35 U.S.C. 368(b) (``In 
accordance with article 27(8) of the treaty, the filing of an 
international application in a country other than the United States on 
the invention made in this country shall be considered to constitute 
the filing of an application in a foreign country within the meaning of 
chapter 17, whether or not the United States is designated in that 
international application.'').
    As set forth above, a foreign filing license does not authorize the 
export of technical data into ePCT for generating a PCT Request and 
resulting zip file for filing as part of an international application 
with the RO/US. More specifically, to complete the PCT Request and 
generate the zip file, ePCT requires a title of the invention, which 
may contain technical data. Moreover, although an abstract is not 
required for creation of the zip file, ePCT allows users to optionally 
provide the contents of the application abstract, which may also 
contain technical data relating to the invention. Since this technical 
data is stored on servers located outside of the United States, users 
of ePCT are reminded that the export of this subject matter abroad for 
the purpose of filing an international application with the RO/US may 
require the appropriate clearances from the Bureau of Industry and 
Security (BIS) at the Department of Commerce (See Scope of Foreign 
Filing Licenses, supra), the Directorate of Defense Trade Controls 
(DDTC) at the Department of State, or the National Nuclear Security 
Administration (NNSA) at the Department of Energy.
    An ePCT demo system has been set up to enable filers to familiarize 
themselves with the system. For further information and to get started, 
go to the ePCT Portal at: https://pct.wipo.int/ePCT. To begin use of 
ePCT, a user is first required to obtain a WIPO account (https://pct.wipo.int/wipoaccounts/en/ePCT/public/register.jsf) and subsequently 
associate a WIPO digital certificate with the account (https://pct.wipo.int/wipoaccounts/en/ePCT/private/certificates.jsf--requires 
login). Users without a WIPO digital certificate can obtain one from 
https://pct.wipo.int/CertRequest/Verisign/services/WorldIntellectualPropertyOrganizationWIPOCustomerCAV2/client/userEnrollMS.htm.

    Dated: May 2, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2016-10733 Filed 5-5-16; 8:45 am]
 BILLING CODE 3510-16-P