Title: How can I file thee, PCT? Let me count the ways!

Bruce Young, [email protected]

There are many different decisions that must be made as a part of filing a PCT application. This blog article will outline some of the decisions that you will need to make in determining how to file a PCT application for your client, and discuss some of the options that may be available to you. Many of the issues raised here are too complex to completely cover in a blog article. Other resources, such as the PCT rules themselves (http://www.wipo.int/pct/en/texts/rules/), courses from the PCT Learning Center (http://pctlearningcenter.org/), and the PCT Applicant’s Guide (http://www.wipo.int/pct/en/appguide/index.jsp), as well as our very own NAPP member’s forum, can be helpful in determining answers to specific questions.

The first question that must be answered is ‘Where can I file this PCT application?’ The Receiving Office (RO) that you can use is based on the nationality or the residence of the applicant(s). Note that it is the applicant that matters here, not the inventor. The PCT Applicant’s Guide will tell you which RO is valid for each contracting state, but applicants from every contracting state are allowed to file in the International Bureau (IP) of the World Intellectual Property Organization (WIPO). So as an example, if you have an applicant that is incorporated in Canada, but has “a real and effective industrial or commercial establishment” in the US, the PCT can be filed in the Canada Intellectual Property Office (RO/CA), the USPTO (RO/US), or the RO/IB.  Remember, however, that if none of your applicants are associated with a PCT signatory state (such as applicants from Taiwan, Argentina, North Korea, etc.), they cannot file a PCT application. If you run into this situation, you may want to consider adding an ‘applicant of convenience’ to allow a PCT application to be filed.

To be an agent for a filing, you must be qualified to represent clients before that RO, or in the case of RO/IB, you must be qualified to represent the applicant in their country’s patent office. If you are not qualified to be an agent for a particular filing, you can manage the filing using your address as the correspondence address, but you will not be able to sign anything for the applicant. Luckily, in the case of a typical PCT filing, the only thing that must be signed is the PCT/RO/101 request form, and both of the electronic preparation tools discussed below allow an image of a signature to be uploaded as an alternative to an s-signature, so doing this doesn’t complicate matters too much.

Many countries, including the United States of course, have foreign filing laws that also may impact where you are able to file the PCT application, depending on the circumstances (see http://www.wipo.int/pct/en/texts/nat_sec.html). From the US point-of-view, if the invention was “made in the USA,” you must either first obtain a foreign filing license (FFL), or file the PCT application in the RO/US. This can get quite complicated if you have inventors from multiple countries, but that is a topic for an entirely different blog article!

Once you have determined where to file the PCT application, you must decide how to prepare the official PCT request form, PCT/RO/101, and provide it to the RO. While it is still possible to download a PDF copy and fill it out manually, there are much better options for filling out this form. WIPO provides a free software application called PCT-SAFE (available from http://www.wipo.int/pct-safe/en/download/download_client.html) that guides you through the various parts of the form and provides many checks to ensure there are no errors, such as requesting an International Search Authority (ISA) that is not available for your applicant (another topic for a separate blog article). This software can then generate a PDF copy of the PCT/RO/101 based on the information you provide. But it can also generate a .zip file that includes the PCT request form and other paperwork, which if submitted instead of the separate PDF request form, entitles your client to a discounted PCT filing fee.  When filing the PCT application in EFS-Web, you will be asked whether you will be providing a .zip file. Answer ‘Yes’ and then upload the .zip file created by PCT-SAFE. Once it is uploaded, you will be given the opportunity to upload the specification, claims, abstract, drawings and any other documents, just as in any other filing in EFS-Web. And then after submission of the files, you can pay the PCT fees, or you can wait to receive the PCT/RO/102 Notification Concerning Payment of Prescribed Fees as you have 30 days to pay PCT fees without a surcharge.

While WIPO is still supporting and updating PCT-SAFE, it has announced that this support will not continue indefinitely. WIPO currently recommends that practitioners use the ePCT system (https://pct.wipo.int/authpage/signin.xhtml?goto=https%3A%2F%2Fpct.wipo.int%3A443%2FePCT%2F) for preparation of the PCT/RO/101 form. The ePCT platform also supports electronic filing directly in the RO/IB. To access the ePCT system, you must create an account with WIPO and set up an authentication method(s) to use. ePCT supports authentication by a WIPO digital certificate, a text message of a one-time password to your cell phone, and/or a one-time password generator app such as Google Authenticator. Once you are logged into your account, it may make sense to enter the applicant and inventor(s) (and yourself if you haven’t already entered your information) into the ePCT address book before actually creating the PCT request by clicking on your name at the top right to pop-up a menu and then selecting ‘Address Book.’  Once you have all of the necessary entities entered into the address book, you can close it to go back to the Workbench.  Clicking on “CREATE NEW IA” in the Workbench of ePCT will start the process of creating a new PCT request. You will then be asked for a file reference (i.e. docket #) and which RO you will use. Note that the RO selected cannot be changed later, so make sure to select the proper one per the discussion above. You can then enter all of the other information required and ePCT will run even more checks on the information to make sure that everything is consistent with PCT rules.

One word of caution about the ePCT: the USPTO has issued a warning that because the servers storing the ePCT information are located outside of the US, foreign filing rules apply. It gets a bit weird here, because if you end up using ePCT to file in the RO/US, it is not actually a foreign filing, so a foreign filing license (FFL) does not give you permission to export the information to the WIPO servers. A simple way to deal with this is to have a very generic title and then don’t upload the abstract text nor the specification/drawings to ePCT if you are filing in the RO/US, so that no technical information about the filing is entered into ePCT. And if you are going to file in the RO/IB, make sure you have a FFL before uploading the content to ePCT. For a more detailed discussion of this issue, see https://blog.oppedahl.com/?p=1763).

Once all of the necessary information has been  entered into ePCT, depending on which RO was selected, you can either ‘Review & File’ the application electronically with the RO/IB or you can ‘Review & Download’ a .zip file for filing in the RO/US as described above in the PCT-SAFE discussion. This step provides many checks of the information entered to help ensure that the PCT filing will be accepted by the RO.

In summary, there are many different ways that a PCT application can be filed. Some of them depend upon the nationality/residence of the applicant(s), but others are more a matter of preference. The most comprehensive set of pre-filing checks is performed if WIPO’s ePCT platform is used to prepare the application for filing, so its use is recommended by WIPO.


By: Bruce Young


Bruce Young is currently an independent patent agent in solo practice serving the intellectual property needs of a variety of clients. He has a broad engineering background with 30 years of experience in both Fortune 100 and small companies, including Jabil, Gateway, Intel, Lucasfilm/Pixar, HP, and several start-ups. Mr. Young has been involved in nearly every aspect of electronic product design and manufacturing at some point in his career including the development of several industry-standard specifications such as PCI, the backbone of modern PC architecture and has been named as an inventor on 40 issued US Patents.


Mr. Young holds a Bachelor of Science degree in Computer Engineering from Iowa State University, and a Master of Science degree in Electrical Engineering from Stanford University. He currently lives in Le Mars, IA with Debra, his wife of over 35 years.

Share this post:

Comments on "Title: How can I file thee, PCT? Let me count the ways!"

Comments 0-5 of 0

Please login to comment