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Understanding and using ePCT - Oppedahl Patent Law Firm LLC

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<strong>Underst<strong>and</strong>ing</strong> <strong>and</strong> <strong>using</strong> <strong>ePCT</strong><br />

http://www.oppedahl.com/cle/epct/<br />

1 of 3 9/16/2012 4:16 AM<br />

<strong>Underst<strong>and</strong>ing</strong> <strong>and</strong> <strong>using</strong> <strong>ePCT</strong><br />

Our most recent <strong>ePCT</strong> webinar happened on Wednesday, the 29th of August. There was only room for<br />

1000 registrations for that webinar, <strong>and</strong> it was sold out. Were you among the many who were unable to<br />

register for that webinar because 1000 people signed up before you<br />

If so, then you have another chance. We will repeat this sold-out webinar on Wednesday, September 26.<br />

Again there will only be room for 1000 registrants, so don't be left out. We have scheduled this webinar for<br />

times when people in Europe <strong>and</strong> Asia are likely to be awake.<br />

About the webinar. <strong>ePCT</strong> is WIPO's new system which permits applicants <strong>and</strong> practitioners to gain<br />

access to PCT patent applications within the International Bureau. Attend this webinar to learn why you<br />

should be <strong>using</strong> <strong>ePCT</strong> <strong>and</strong> to learn how to use <strong>ePCT</strong>. Learn Best Practices for the use of <strong>ePCT</strong>.<br />

Corporate people -- Learn how your outside counsel can <strong>and</strong> should give you access to your PCT<br />

applications in <strong>ePCT</strong>. Learn how you can use <strong>ePCT</strong> to monitor the status of your PCT applications <strong>and</strong> to<br />

learn of significant events affecting your PCT applications. Learn how <strong>ePCT</strong> can inform you each time any<br />

new document is added to the file for any of your PCT applications.<br />

Private firms -- Learn how you can give access through <strong>ePCT</strong> to your clients. Learn how you can give<br />

access to the foreign firms who will be entering the national phase from a PCT application according to<br />

your instructions. Learn how you can make use of <strong>ePCT</strong> when a foreign firm entrusts to you the task of<br />

entering the national stage from a PCT application.<br />

Everyone -- Learn how you can use <strong>ePCT</strong> to gain access to information that you cannot get any other way<br />

-- not through <strong>Patent</strong>scope, not through PAIR. Learn how you can receive automatic updates of status for<br />

your PCT applications.<br />

When The starting time is 8:00 UTC (GMT) Wednesday, September 26, 2012. For your convenience we<br />

note that this starting time is the same as:<br />

Geneva (Switzerl<strong>and</strong> ) Wednesday, September 26, 2012 at 10:00 AM CEST<br />

Beijing (China) Wednesday, September 26, 2012 at 4:00 PM CST<br />

London (United Kingdom) Wednesday, September 26, 2012 at 9:00 AM BST<br />

Tokyo (Japan) Wednesday, September 26, 2012 at 5:00 PM JST<br />

Seoul (South Korea) Wednesday, September 26, 2012 at 5:00 PM KST<br />

Sydney (Australia) Wednesday, September 26, 2012 at 6:00 PM EST<br />

Denver (U.S.A.) Wednesday, September 26, 2012 at 2:00 AM MDT<br />

The webinar is scheduled to last 1¾ hours.<br />

Note that when you sign up, you are signing up for the one time that the program is being offered. Do not<br />

think that we are offering webinars at seven different times. If you want to know what time the webinar will<br />

begin in your time zone, please click on the registration link <strong>and</strong> click on "Show in my Time Zone".<br />

You can see:<br />

WIPO's User Guide to <strong>ePCT</strong><br />

WIPO's FAQ about <strong>ePCT</strong><br />

WIPO's Getting Started guide for <strong>ePCT</strong><br />

WIPO first started beta-testing <strong>ePCT</strong> in January of 2011, at which time <strong>Oppedahl</strong> <strong>Patent</strong> <strong>Law</strong> <strong>Firm</strong> was<br />

among the h<strong>and</strong>ful of firms <strong>and</strong> companies invited to beta-test the system <strong>and</strong> to make suggestions for<br />

improvement. By now the people of OPLF have been <strong>using</strong> <strong>ePCT</strong> for more than a year. In this webinar,<br />

Professor <strong>Oppedahl</strong> draws upon more than a year <strong>and</strong> a half of intensive use of the <strong>ePCT</strong> system.<br />

Who should attend this webinar<br />

Corporate patent applicants (located anywhere in the world) that have filed at least one PCT<br />

application<br />

<strong>Patent</strong> practitioners anywhere in the world who have filed at least one PCT application


<strong>Underst<strong>and</strong>ing</strong> <strong>and</strong> <strong>using</strong> <strong>ePCT</strong><br />

http://www.oppedahl.com/cle/epct/<br />

2 of 3 9/16/2012 4:16 AM<br />

Prerequisites. This webinar will assume that you already have at least a little familiarity with the PCT<br />

process. If you have e-filed at least one PCT application, or if you have followed at least one PCT<br />

application through its progress from filing to the 30-month date, then you have enough familiarity to be<br />

prepared for this webinar.<br />

The faculty. Your professor is Carl <strong>Oppedahl</strong>, a partner in OPLF. Carl previously served as<br />

the chair of the AIPLA PCT Issues Committee <strong>and</strong> is now a member of the Board of Directors<br />

of AIPLA. He has spent more than twenty years writing <strong>and</strong> prosecuting patent applications for<br />

clients. He serves as an adjunct professor at University of Denver law school, teaching<br />

Advanced <strong>Patent</strong> <strong>Law</strong>.<br />

After a previous version of this webinar was presented on March 28, 2012, attendees were asked to<br />

complete an evaluation. One of the questions was "would you recommend this webinar to others" One<br />

hundred percent of the persons responding said "yes". Here were some of the detailed responses:<br />

Yes, it was informative <strong>and</strong> very helpful<br />

Yes, other attorneys, secretaries, assistants <strong>and</strong> docket clerks from my firm<br />

Yes, especially those with no prior experience with efiling<br />

Yes, everyone at my firm<br />

Yes, definitely<br />

Yes, most certainly<br />

CLE accreditation<br />

CLE accreditation has been approved for California for 1¾ credits. In the short time between now <strong>and</strong> the<br />

webinar, it is unlikely that we will obtain accreditation in any additional states. We will provide a uniform<br />

certificate of attendance ("UCOA"). In the past we have sometimes heard from an attendee that he or she<br />

has been able to obtain CLE credit in his or her own state by submitting the UCOA to his or her own CLE<br />

authority. Please do not ask us to try to obtain CLE accreditation from other states.<br />

In any event the way you will receive CLE credit, if at all, is by submitting the UCOA yourself to your state<br />

CLE agency.<br />

Frequently asked questions<br />

Q. Is this webinar only for US filers<br />

A. No. This webinar, <strong>and</strong> indeed the <strong>ePCT</strong> system, is for all PCT filers everywhere in the world, regardless<br />

of geographic location or choice of Receiving Office.<br />

Cost The webinar is free of charge.<br />

How to sign up To sign up, please click on the registration link. If you later find that you will be unable to<br />

attend, please use the cancellation link in your confirmation email to cancel your registration. This will free<br />

up one of the 1000 available signups for someone else.<br />

Format. This program is a webinar, meaning a seminar offered over the Web. It is anticipated that at some<br />

law firm <strong>and</strong> corporate locations, the presentation-slide content of the webinar will be projected upon a<br />

screen in a conference room. Other attendees will view the presentation on their own computers.<br />

Written materials will be provided (as a PDF file) shortly before the program.<br />

Participants will be able to submit typed questions through the webinar system.<br />

After the webinar has finished, participants will be requested to complete an online evaluation form.<br />

Audio will be provided both through computer speakers <strong>and</strong> by means of dial-in telephone numbers. A user<br />

with a computer headset can use the headset to listen to the audio. Many attendees will find it convenient<br />

to receive the audio through their computer speakers, which is free of any per-minute charge. It will also be<br />

possible to dial in to a telephone conference bridge to receive the audio; this will be a toll call with regular<br />

per-minute long-distance telephone charges.


nderst<strong>and</strong>ing <strong>and</strong> <strong>using</strong> <strong>ePCT</strong><br />

http://www.oppedahl.com/cle/epct/<br />

3 of 3 9/16/2012 4:16 AM<br />

Cutoff time for registrations. The ability to register for the webinar will be turned off an hour or two in<br />

advance of the stated starting time of the webinar, or when the 1000 signups are gone, whichever happens<br />

first. We can offer no assurances that an attempted webinar registration during the two hours prior to a<br />

webinar will be successful.


Learning <strong>and</strong> Using <strong>ePCT</strong><br />

Webinar<br />

September 26, 2012<br />

Carl <strong>Oppedahl</strong><br />

<strong>Oppedahl</strong> <strong>Patent</strong> <strong>Law</strong> <strong>Firm</strong> <strong>LLC</strong><br />

www.oppedahl.com<br />

1<br />

Format <strong>and</strong> schedule<br />

●<br />

●<br />

●<br />

●<br />

This is a webinar<br />

Please submit questions <strong>using</strong> the “chat”<br />

system<br />

I will try to answer questions as they arise<br />

The webinar is scheduled to finish in about 1¾<br />

hours, maybe a little sooner depending on how<br />

many questions we have<br />

2<br />

What is <strong>ePCT</strong><br />

●<br />

●<br />

●<br />

●<br />

<strong>ePCT</strong> is WIPO's new system permitting access<br />

to application files <strong>and</strong> information that is<br />

otherwise kept secret within the International<br />

Bureau<br />

It lets a filer see an application file even before<br />

18-month publication has occurred<br />

It lets a filer see a Written Opinion <strong>and</strong> IPRP<br />

prior to the arrival of the 30-month date<br />

It permits selective access to a file by clients,<br />

inventors, <strong>and</strong> others<br />

3


What is <strong>ePCT</strong><br />

●<br />

●<br />

●<br />

●<br />

●<br />

It provides automatic reminders of upcoming<br />

due dates such as the 30-month date<br />

You can withdraw an IA<br />

You can withdraw a priority claim<br />

You can submit a 92bis change<br />

It provides immediate feedback as to whether a<br />

change (such as a Rule 92bis change) has<br />

been acted upon<br />

4<br />

What is <strong>ePCT</strong><br />

●<br />

It lets you see <strong>and</strong> copy detailed bibliographic<br />

data<br />

5<br />

What will <strong>ePCT</strong> be next<br />

Real Soon Now, epCT will allow you to carry out online<br />

web filing of new international applications (N.B. It is<br />

currently NOT possible to use <strong>ePCT</strong> to file a new<br />

international application)<br />

6


Why is it imperative that you learn to<br />

use <strong>ePCT</strong><br />

●<br />

●<br />

●<br />

It will soon be as crucial to your daily tasks as<br />

the use of other patent office systems (for<br />

example Private PAIR) is now<br />

It will permit corporate counsel to have better<br />

control <strong>and</strong> oversight of outside counsel<br />

It will permit forward-thinking private patent<br />

firms to provide controlled access to clients <strong>and</strong><br />

foreign colleagues<br />

7<br />

What does it cost to use <strong>ePCT</strong><br />

●<br />

●<br />

●<br />

●<br />

There is no out-of-pocket cost to use <strong>ePCT</strong><br />

Each user will have to spend a modest amount<br />

of time setting up an <strong>ePCT</strong> user account <strong>and</strong> a<br />

WIPO cryptographic certificate<br />

This only needs to be done once per user<br />

Getting an application linked to <strong>ePCT</strong> is easy<br />

● Extending access to a new person is easy<br />

9<br />

8<br />

Another benefit of <strong>ePCT</strong><br />

●<br />

●<br />

●<br />

●<br />

With <strong>ePCT</strong> you will learn of outgoing<br />

correspondence before it happens<br />

This gives you advance warning if action is<br />

required<br />

This permits you to docket things sooner<br />

Even if legacy inbound correspondence were to<br />

get lost, you will have the notification from<br />

<strong>ePCT</strong>


●<br />

●<br />

Another benefit of the<br />

correspondence notifications<br />

For example the form that says that the fees<br />

have been paid, or the form that says the<br />

priority documents have been received …<br />

This permits you to clear the docket sooner<br />

● This is a Best Practice<br />

11<br />

10<br />

If a case is being h<strong>and</strong>led by outside<br />

counsel ...<br />

●<br />

●<br />

●<br />

The correspondence notification from <strong>ePCT</strong> will<br />

come to you as in-house counsel<br />

You can make note of how long it takes for<br />

outside counsel to report the correspondence to<br />

you<br />

If outside counsel were to screw something up,<br />

you would learn of it right away<br />

Why you want to use <strong>ePCT</strong><br />

WIPO will automatically notify you of upcoming<br />

due dates:<br />

●<br />

●<br />

Imminent arrival of the 30 months<br />

Imminent arrival of “too late to withdraw the<br />

application” date<br />

● Imminent arrival of due date for Article 19<br />

amendment<br />

●<br />

Imminent arrival of due date for Dem<strong>and</strong><br />

12


The 30 months<br />

Here is an actual warning from <strong>ePCT</strong>:<br />

The 30 months time limit<br />

(end of the international phase)<br />

for PCT/US2010/047989<br />

will expire in 1 month<br />

13<br />

Why you want to use <strong>ePCT</strong><br />

●<br />

Warns you if a priority document is still<br />

outst<strong>and</strong>ing<br />

14<br />

Why you want to use <strong>ePCT</strong><br />

WIPO will automatically notify you of events of<br />

possible interest:<br />

●<br />

●<br />

●<br />

●<br />

Papers have been filed in the application<br />

Bibliographic data have changed<br />

Something will soon be mailed to you relating to<br />

the application<br />

Status of the PCT application has changed<br />

15


How to get going with <strong>ePCT</strong><br />

●<br />

●<br />

●<br />

●<br />

●<br />

Get a WIPO crypto certificate<br />

Sign up for a WIPO user ID <strong>and</strong> password<br />

Upload your crypto certificate to the <strong>ePCT</strong><br />

system<br />

Gain access to your present <strong>and</strong> past PCT<br />

applications<br />

Give access to selected PCT applications to<br />

colleagues <strong>and</strong> clients<br />

16<br />

Important resources<br />

at WIPO web site<br />

17<br />

Getting a WIPO crypto certificate<br />

●<br />

●<br />

●<br />

●<br />

●<br />

The process normally takes at least one<br />

business day<br />

Plan ahead by getting your crypto certificate<br />

ahead of need<br />

The certificate can be used for access to <strong>ePCT</strong><br />

The certificate can also be used for e-filing in<br />

RO/IB<br />

You can also use it for e-signing outbound<br />

emails <strong>and</strong> for receiving encrypted emails<br />

18


●<br />

●<br />

●<br />

Getting a WIPO crypto certificate<br />

Maybe you already have a WIPO crypto<br />

certificate – for example to be used in e-filing in<br />

RO/IB<br />

Go to<br />

http://www.wipo.int/pct-safe/en/certificates.html<br />

Follow the instructions<br />

Note: make careful note of your “challenge<br />

phrase”, keeping it somewhere so that you can<br />

find it again two years from now when you will<br />

need it for a renewal<br />

19<br />

●<br />

●<br />

●<br />

What to do with your crypto<br />

certificate when you get it<br />

Back up the certificate to a safe place so that<br />

you can find it when you change computers or<br />

reinstall your operating system on your<br />

computer<br />

Use the backup to load the certificate into each<br />

computer that you may wish to use in future<br />

In each computer that you may wish to use in<br />

the future, load the certificate into each web<br />

browser in that computer<br />

20<br />

21


22<br />

When you install a new browser ...<br />

●<br />

●<br />

You might install a new browser into your<br />

computer (e.g. Firefox, Chrome)<br />

When you do this, then use the backup of your<br />

crypto certificate to install the certificate into<br />

that browser<br />

23<br />

Sharing your certificate ...<br />

●<br />

●<br />

It should not be necessary to share your WIPO<br />

crypto certificate with anyone else, other than<br />

for purposes of backing it up<br />

This is very different from Private PAIR <strong>and</strong><br />

EFS-Web where it is necessary for each<br />

registered practitioner to share his or her<br />

certificate with everyone in the office<br />

24


●<br />

●<br />

●<br />

Who should obtain a WIPO crypto<br />

certificate<br />

Each person in your office should obtain his or<br />

her own WIPO crypto certificate<br />

This should be part of your checklist for things<br />

that a newly hired person does on his or her<br />

first day of work<br />

If <strong>and</strong> when a person leaves your employ, it is<br />

only a matter of a few mouse clicks to remove<br />

that person's access to <strong>ePCT</strong> files<br />

25<br />

●<br />

●<br />

●<br />

After you have your<br />

WIPO crypto certificate<br />

Go to https://pct.wipo.int/LoginForms/epct.jsp<br />

Create a WIPO user account<br />

After the WIPO user account has been created,<br />

you should upload the public key of your WIPO<br />

crypto certificate to the <strong>ePCT</strong> system<br />

26<br />

●<br />

●<br />

When you are creating your <strong>ePCT</strong><br />

account ...<br />

Go ahead <strong>and</strong> enter your mailing address<br />

This might save a bit of time when you are<br />

seeking access to a PCT application<br />

27


Uploading your crypto certificate to<br />

the <strong>ePCT</strong> system<br />

Some people find this step to be a bit of a<br />

challenge<br />

Note that you are not uploading the entire crypto<br />

certificate, but only the public key of your crypto<br />

certificate<br />

28<br />

Polling question<br />

29<br />

●<br />

●<br />

●<br />

After you have uploaded your<br />

certificate to <strong>ePCT</strong><br />

Now you need to gain access to your PCT<br />

applications<br />

This means “back-filling”, that is, gaining access<br />

to applications filed as long ago as January 1,<br />

2009.<br />

This means gaining access to applications filed<br />

going forward<br />

30


●<br />

●<br />

●<br />

●<br />

After you have gained access to<br />

your PCT applications<br />

Now you can provide access to your colleagues<br />

<strong>and</strong> co-workers<br />

Each of them must obtain his or her own WIPO<br />

crypto certificate<br />

Each of them must create a WIPO user account<br />

Each of them must upload his or her WIPO<br />

crypto certificate to the <strong>ePCT</strong> system<br />

● Then you can start the “e-h<strong>and</strong>shakes”<br />

32<br />

31<br />

Doing e-h<strong>and</strong>shakes<br />

●<br />

●<br />

●<br />

●<br />

You can extend an e-h<strong>and</strong>shake invitation to a<br />

colleague or co-worker<br />

He or she can accept the invitation<br />

Then you can give him or her access to one or<br />

more PCT applications in the <strong>ePCT</strong> system<br />

Except not if they have this symbol!<br />

“User account not authenticated”<br />

Polling question<br />

33


Setting up a list of IDs<br />

●<br />

●<br />

Within your office, set up an intranet page listing<br />

everybody's Customer IDs (<strong>ePCT</strong> account<br />

names)<br />

This makes it quicker <strong>and</strong> easier to accomplish<br />

e-h<strong>and</strong>shakes<br />

34<br />

e-viewer or e-editor or e-owner<br />

●<br />

●<br />

When you give someone access to a file in <strong>ePCT</strong>, you<br />

get to pick whether to make the person an e-owner or<br />

an e-editor or an e-viewer<br />

●<br />

●<br />

●<br />

an e-owner can do more things including changing<br />

(editing) who has access<br />

an e-editor cannot change (edit) who has access<br />

an e-viewer can only look but cannot change<br />

anything<br />

In general if you are unsure whether to make someone<br />

an e-editor or an e-owner, make them an e-viewer.<br />

You can always upgrade their access later to e-editor<br />

or e-owner if you wish.<br />

35<br />

At least two e-owners<br />

●<br />

●<br />

●<br />

It is a Best Practice always to have at least two<br />

e-owners for each PCT application<br />

This provides a redundant path if any one<br />

user's user ID is compromised or if an e-owner<br />

leaves the employ of the company or firm<br />

As an example, in a law firm perhaps each<br />

partner should be an e-owner for each PCT<br />

application<br />

36


Gaining access to applications<br />

●<br />

●<br />

●<br />

●<br />

The procedure for gaining access to a PCT<br />

application will be different depending on …<br />

Whether it has been published<br />

Whether a 92bis change has been filed<br />

Whether it was originally filed in the RO/IB or<br />

elsewhere<br />

37<br />

A new docket procedure<br />

You should set up a new docket procedure,<br />

namely what to do when you receive Form<br />

PCT/IB/301 (“Notification of Receipt of Record<br />

Copy”).<br />

When you receive this Form, make careful note<br />

of:<br />

●<br />

●<br />

The international application number<br />

The international filing date<br />

● The secret code at the bottom of the page<br />

39<br />

38


A new docket procedure<br />

To gain access to the application, enter these<br />

three pieces of information into <strong>ePCT</strong><br />

40<br />

●<br />

●<br />

The secret code number is not<br />

enough<br />

For a case filed in RO/IB, <strong>ePCT</strong> will check to<br />

see if the crypto certificate that was used to e-<br />

file the application is among those that you<br />

uploaded to your <strong>ePCT</strong> account<br />

If they match, <strong>and</strong> if the other three items are<br />

correct, then <strong>ePCT</strong> will give you access<br />

41<br />

●<br />

●<br />

●<br />

●<br />

If the application has been<br />

published ...<br />

If the application has been published, then<br />

anyone can see Form PCT/IB/301 in<br />

<strong>Patent</strong>scope<br />

The secret code number is thus known to<br />

everyone<br />

The secret code number cannot be employed to<br />

determine who can gain access to the file in<br />

<strong>ePCT</strong><br />

Some other approach is required<br />

42


●<br />

The secret code number is not<br />

enough<br />

For a case filed in an RO other than RO/IB, that<br />

has not yet been published, <strong>ePCT</strong> will ask for<br />

the three pieces of information (including the<br />

secret code number) <strong>and</strong> will also ask for<br />

something else, such as the number of the<br />

highest numbered claim<br />

43<br />

●<br />

●<br />

●<br />

●<br />

Best practice for newly filed PCT<br />

applications<br />

The Best Practice is to use PCT-SAFE FM<br />

(Forms Manager) to prepare the Request<br />

Include an “e-ownership code” in the Request<br />

(as will be described)<br />

e-file the Request with the e-ownership code<br />

inside<br />

This will automatically make the IA available in<br />

<strong>ePCT</strong><br />

44<br />

●<br />

●<br />

●<br />

Best practice for newly filed PCT<br />

applications<br />

To get the e-ownership code ….<br />

Go to <strong>ePCT</strong>, click on “eOwnership”<br />

Click on “Request eOwnership Code”<br />

●<br />

45


In PCT-SAFE FM ...<br />

46<br />

Flexible ...<br />

●<br />

There is no requirement that the person whose<br />

WIPO user ID is entered into the Request (the<br />

person who will gain immediate access to the<br />

application in <strong>ePCT</strong>) be the same person as the<br />

person whose WIPO crypto certificate is used<br />

to e-sign the PCT application nor need it be the<br />

same person as the person whose WIPO crypto<br />

certificate is used to secure the e-filing in PCT-<br />

SAFE FM (if you file in RO/IB).<br />

47<br />

Works with many kinds of filing<br />

●<br />

●<br />

●<br />

●<br />

This approach works in any Receiving Office so<br />

long as you communicate things in a computerreadable<br />

way when you file the PCT<br />

application.<br />

PCT-EASY mode (the diskette or CD-ROM)<br />

EFS-Web <strong>using</strong> the ZIP file in RO/US<br />

PCT-SAFE FM e-filing in RO/IB<br />

PCT-L list members have successfully used this<br />

approach for access in <strong>ePCT</strong><br />

48


For a published case<br />

●<br />

●<br />

●<br />

●<br />

For a published case, you can ask for access<br />

<strong>and</strong> this will prompt the IB to reach out to the<br />

agent or correspondent<br />

The IB will send a new secret code number to<br />

the agent or correspondent<br />

The new secret code number cannot be used<br />

by just anyone<br />

The new secret code number can only be used<br />

by the particular <strong>ePCT</strong> user who requested the<br />

new secret code number<br />

49<br />

Gaining access to legacy cases<br />

●<br />

●<br />

●<br />

You will want to gain access to each newly filed<br />

PCT application<br />

You will also want to gain access to all of your<br />

pending PCT applications (“legacy<br />

applications”)<br />

This requires a one-time process for each<br />

legacy application<br />

50<br />

If a case has already been<br />

published, why do I care about<br />

gaining access to it in <strong>ePCT</strong><br />

There are many reasons to care:<br />

●<br />

●<br />

<strong>Patent</strong>scope will not let you see the Written<br />

Opinion of the ISA until 30 months, while <strong>ePCT</strong><br />

will let you see it immediately<br />

<strong>Patent</strong>scope will not let you see Chapter II<br />

documents (e.g. WO-II <strong>and</strong> IPRP-II) until 30<br />

months, while <strong>ePCT</strong> will let you see them<br />

immediately<br />

51


If a case has already passed 30<br />

months, why do I care about gaining<br />

access to it in <strong>ePCT</strong><br />

●<br />

●<br />

●<br />

There are some things that are never visible in<br />

<strong>Patent</strong>scope, that are visible in <strong>ePCT</strong><br />

If there were some gap in your file, <strong>ePCT</strong><br />

makes it very easy to fill that gap<br />

You can use <strong>ePCT</strong> as a searchable database to<br />

find answers to questions about your portfolio<br />

52<br />

How far back can I go<br />

●<br />

Any PCT application filed on or after 1 January<br />

2009 can be loaded into <strong>ePCT</strong><br />

53<br />

●<br />

●<br />

●<br />

●<br />

●<br />

How far back should I go<br />

At a minimum you should load every pending<br />

PCT case<br />

This means every PCT case that was filed (or<br />

whose priority application was filed) within<br />

about the past 2½ years<br />

This will among other things give you the<br />

automatic warning about the imminent 30<br />

months<br />

The Best Practice is to go “all the way back” to<br />

January 1, 2009<br />

You never know when you may need something<br />

54<br />

in a hurry


New docket procedure – pub preview<br />

●<br />

●<br />

●<br />

●<br />

When a newly filed case is visible in <strong>ePCT</strong> …<br />

Print out the “preview” of the publication front<br />

page<br />

Proofread all bibliographic data including<br />

spelling of applicant <strong>and</strong> inventor names<br />

Make sure all priority claims are present <strong>and</strong><br />

accurate<br />

● Make corrections as necessary<br />

56<br />

55<br />

Filing things with the IB<br />

●<br />

●<br />

●<br />

Legacy practice for many filers is to file papers<br />

at the RO <strong>and</strong> leave it to the RO to pass papers<br />

on to the IB<br />

For many categories of papers (including 92bis,<br />

26bis), this is not a Best Practice<br />

Legacy practice for many filers is to use fax or<br />

physical delivery to file things at the IB<br />

● This is not a Best Practice<br />

57<br />

Filing follow-on papers with the IB<br />

●<br />

●<br />

Better to e-file than <strong>using</strong> other ways of filing<br />

That way the paper gets into the correct file<br />

automatically<br />

● The “upload service” was phased out on July 1,<br />

2012<br />

●<br />

The Best Practice is to learn how to use <strong>ePCT</strong><br />

for filing follow-on papers with the IB


58<br />

59<br />

Constructable links<br />

<strong>ePCT</strong> provides constructable links. See for<br />

example a link such as<br />

https://pct.wipo.int/<strong>ePCT</strong>/faces/en/private/iaSearch.xhtmliaNo=PCT/IB2012/050279<br />

This link may be constructed by the user, listing<br />

any international application number (that is<br />

available to the user in the <strong>ePCT</strong> system).<br />

You can use this in your intranet or client extranet.<br />

This represents an improvement relative to the<br />

PAIR system.<br />

60


Note that these are “deep links”<br />

●<br />

●<br />

The constructable links are "deep links".<br />

Such a link will then reach the particular <strong>and</strong><br />

specific <strong>ePCT</strong> page for that international<br />

application (if it is in <strong>ePCT</strong> <strong>and</strong> if the user has<br />

appropriate login credentials). The page will<br />

have a tab already opened to the detail<br />

information for the international application.<br />

● This is a great improvement over Private PAIR.<br />

62<br />

61<br />

An e-h<strong>and</strong>shake is not the same<br />

thing as giving access to a file<br />

You will be giving a person access to a file only if<br />

you do two things:<br />

●<br />

●<br />

you make the person becomes an e-h<strong>and</strong>shake<br />

“friend”, <strong>and</strong><br />

You take the further step of giving that person<br />

“access” to a file<br />

Making someone an e-h<strong>and</strong>shake “friend” does<br />

not, by itself, give the person access to any files!<br />

●<br />

●<br />

●<br />

●<br />

How corporate patent departments<br />

should use <strong>ePCT</strong><br />

Suppose a PCT application of yours is in the<br />

h<strong>and</strong>s of outside counsel<br />

Outside counsel should already be <strong>using</strong> <strong>ePCT</strong><br />

Outside counsel should give you access to the<br />

PCT application in <strong>ePCT</strong><br />

Because outside counsel should already be<br />

<strong>using</strong> <strong>ePCT</strong>, <strong>and</strong> because it only takes two or<br />

three mouse clicks to give you access, you<br />

should not be billed for such access<br />

63


If you are the filer ...<br />

●<br />

●<br />

●<br />

You should of course use <strong>ePCT</strong> yourself<br />

You should encourage clients <strong>and</strong> inventors to<br />

join the <strong>ePCT</strong> system<br />

You can then give them e-editor access to<br />

particular PCT applications<br />

64<br />

●<br />

●<br />

●<br />

●<br />

●<br />

<strong>ePCT</strong> plays a crucial role for<br />

transferred-in cases<br />

Whenever a PCT case filed by other counsel is<br />

transferred to you …<br />

It is a Best Practice to gain access to the<br />

application in <strong>ePCT</strong><br />

This lets you see any surprises that might be in<br />

the file<br />

This lets you see the Written Opinion<br />

This lets you conduct searches <strong>and</strong> generate<br />

reports including this case<br />

65<br />

For a transferred-in case<br />

●<br />

●<br />

Hopefully prior counsel already e-filed a DCR<br />

(designation of common representative) for<br />

each inventor<br />

If not, then you should do this<br />

● Then it only requires one more document (a<br />

Power of Attorney from the Common<br />

Representative to you) to establish the new<br />

Power of Attorney<br />

66


For a transferred-out portfolio<br />

● The client should direct former counsel to do e-<br />

h<strong>and</strong>shakes with new counsel<br />

●<br />

●<br />

●<br />

Former counsel should then give e-access to<br />

the entire portfolio to new counsel, making them<br />

e-owners<br />

This requires only a half a dozen mouse clicks<br />

This gives new counsel full <strong>and</strong> instant access<br />

to all transferred cases<br />

67<br />

Consequence of 92bis change<br />

Submitting a Rule 92bis change request will<br />

cause all online access to the international<br />

application to be suspended until the International<br />

Bureau has processed the request <strong>and</strong> verified<br />

any affect the Rule 92bis change might have on<br />

current access rights to the IA.<br />

Plan ahead <strong>and</strong> make all other changes or actions<br />

before submitting the 92bis change.<br />

68<br />

Other h<strong>and</strong>y functions<br />

●<br />

●<br />

●<br />

●<br />

●<br />

Display time line for a particular PCT application<br />

Display IASR (international application status<br />

report)<br />

Post a note<br />

Post a warning<br />

Display detailed bibliographic data<br />

69


Bibliographic data ...<br />

70<br />

Searching <strong>and</strong> filtering ...<br />

71<br />

Third-party observations<br />

●<br />

●<br />

●<br />

Third parties are now able to make<br />

“observations” regarding PCT applications that<br />

are in the international phase<br />

This may be done up to the 28<br />

th<br />

month<br />

You should make sure all of your cases are in<br />

<strong>ePCT</strong> so that you will receive automatic<br />

notifications of such observations<br />

72


If someone makes an “observation”<br />

regarding one of your PCT<br />

applications ...<br />

●<br />

●<br />

●<br />

You may wish to respond<br />

You may do so through the <strong>ePCT</strong> system, any<br />

time before the end of the 30 months<br />

Your response will accompany the observation<br />

when it is communicated to a DO/EO<br />

73<br />

●<br />

●<br />

If someone makes an<br />

“observation” ...<br />

So far as a US designation or continuation is<br />

concerned, you may wish to file an Information<br />

Disclosure Statement with the USPTO to make<br />

a clear record that the references from the<br />

observation are considered by the Examiner<br />

The US practitioner who is h<strong>and</strong>ling a US<br />

national-phase case or a continuation will need<br />

to check <strong>ePCT</strong> or <strong>Patent</strong>scope carefully to look<br />

for such observations<br />

74<br />

You can disclose references ...<br />

●<br />

●<br />

●<br />

<strong>ePCT</strong> also permits an applicant to submit<br />

“observations on close prior art”<br />

This is rather like filing an IDS in US practice<br />

The observations will be notified to the ISA (if<br />

the international search report has not yet been<br />

received by the IB), to the IPEA (if applicable<br />

<strong>and</strong> the international preliminary report on<br />

patentability has not been received by the IB)<br />

<strong>and</strong> to DOs. It is up to the individual Offices to<br />

decide what use to make of an observation<br />

75


You can disclose references ...<br />

●<br />

●<br />

●<br />

If the applicant has disclosed references<br />

through <strong>ePCT</strong>, then probably an Information<br />

Disclosure Statement needs to be filed in the<br />

US national phase or continuation case …<br />

To ensure that there will be a clear record that<br />

the Examiner has considered such references<br />

Again this means that US counsel need to<br />

check <strong>ePCT</strong> or <strong>Patent</strong>scope to see if there are<br />

such references<br />

76<br />

How to keep up to date<br />

●<br />

●<br />

Join the PCT-L listserv<br />

Instructions at www.oppedahl.com/pct<br />

● You can always unsubscribe later if you wish<br />

78<br />

77<br />

Polling question


Thank you!<br />

79


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Guide for Preparation of <strong>Patent</strong> Drawings<br />

The authoritative guide to the preparation of patent drawings for filing in the United States<br />

<strong>Patent</strong> <strong>and</strong> Trademark Office. Topics include:<br />

A section by an experienced practitioner (Carl <strong>Oppedahl</strong> of <strong>Oppedahl</strong> <strong>Patent</strong> <strong>Law</strong> <strong>Firm</strong> <strong>LLC</strong>) on<br />

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PROCESSING OF DRAWINGS<br />

Review of Drawings by Office of Initial <strong>Patent</strong> Examination<br />

Review by USPTO Draftsperson<br />

On Examiner's First (Non-Allowance) Action<br />

On Examiner's Subsequent Actions<br />

On Allowance<br />

After Allowance<br />

SELECTED U.S. LAWS AND RULES OF PRACTICE RELATING TO PATENT<br />

DRAWINGS<br />

35 USC § 113 Drawings<br />

37 CFR § 1.58 Chemical <strong>and</strong> mathematical formulae <strong>and</strong> tables<br />

37 CFR § 1.74 Reference to drawings<br />

37 CFR § 1.81 Drawings required in patent application<br />

37 CFR § 1.83 Content of drawing<br />

37 CFR § 1.84 St<strong>and</strong>ards for drawings<br />

37 CFR § 1.85 Corrections to drawings<br />

37 CFR § 1.96 Submission of computer program listings<br />

37 CFR § 1.121 Manner of making amendments in applications<br />

37 CFR § 1.151 Rules applicable [Designs]<br />

37 CFR § 1.152 Design drawings<br />

37 CFR § 1.161 Rules applicable [Plants]<br />

37 CFR § 1.165 Plant drawings<br />

37 CFR § 1.171 Application for reissue<br />

37 CFR § 1.173 Reissue specification, drawings, <strong>and</strong> amendments<br />

37 CFR § 1.211 Publication of applications<br />

37 CFR § 1.215 <strong>Patent</strong> application publication<br />

37 CFR § 1.437 The drawings [International Applications]<br />

37 CFR § 1.530 Statement by patent owner in ex parte reexamination;<br />

amendment by patent owner in ex parte or inter partes reexamination;<br />

inventorship change in ex parte or inter partes reexamination<br />

Article 7 of <strong>Patent</strong> Cooperation Treaty <strong>and</strong> Selected PCT Rules Pertaining to<br />

Drawings<br />

Symbols<br />

Drawing Examples<br />

Black ink<br />

Black ink [computer screen image]<br />

Identification of drawings<br />

Graphic forms in drawings [chemical formulae]<br />

Graphic forms in drawings [waveforms]<br />

Graphic forms in drawings [DNA structures]<br />

Views<br />

Exploded views<br />

Partial views<br />

Sectional views<br />

Alternate position<br />

Modified forms<br />

Arrangement of views<br />

Front page view


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Paperback: 152 pages<br />

Publisher: Penaya Publishing<br />

ISBN: 978-0984408436<br />

Dimensions: 9.6 x 6.7 x 0.3 inches<br />

Character of lines, numbers, <strong>and</strong> letters<br />

Shading [spaced lines]<br />

Shading [stippling]<br />

Symbols<br />

Legends<br />

Numbers, letters, <strong>and</strong> reference characters<br />

Lead lines<br />

Arrows<br />

Copyright or Mask Work Notice<br />

Numbering of sheets of drawings<br />

Numbering of views<br />

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Title of Activity: <strong>Underst<strong>and</strong>ing</strong> <strong>and</strong> <strong>using</strong> <strong>ePCT</strong><br />

Date of Activity: September 26, 2012<br />

Location: Webinar<br />

Activity Number: California 15406<br />

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