TAKEAWAY: The USPTO is proposing rule changes to make it easier for applicants to use WIPO’s ePCT system when filing international applications through the USPTO as a receiving office for WIPO’s International Bureau.
Applicants who wish to file an international PCT application often have several options for where to file the application, subject to national security laws and foreign filing requirements. The USPTO serves as a receiving office for WIPO’s International Bureau (IB), such that U.S. applicants can file a PCT application via the USPTO, which then transmits the application to the IB for further processing. In principle, U.S. applicants can file a PCT application with the IB directly, as long as they comply with export control regulations and have a foreign filing license that permits the transfer of technical information abroad.
WIPO offers several tools to facilitate the filing and processing of PCT applications, including ePCT, an online web-based service. ePCT includes validation features to help applicants complete the necessary request forms and verify that the information is complete and accurate. Because ePCT resides on WIPO’s servers abroad, U.S. applicants need to confirm that they have the proper government authorization before using the ePCT system.
The USPTO is seeking public comments on proposed rule changes to facilitate the use of ePCT, according to a Notice published January 30, 2020, in the Federal Register. Currently, a foreign filing license from a priority U.S. provisional application or otherwise obtained from the USPTO does not authorize applicants to use ePCT to prepare application documents for filing in the USPTO as a receiving office for the IB. Under the proposed rule changes, a foreign filing license would enable U.S. applicants to take advantage of ePCT’s validation features before filing via the USPTO. Applicants would need to continue to make sure that they have the proper foreign filing license before providing any information to the ePCT system.
The deadline for submitting comments is March 30, 2020.