Understanding and using ePCT - Oppedahl · 1 Learning and Using ePCT Webinar September 26, 2012...

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Understanding and using ePCT Our most recent ePCT webinar happened on Wednesday, the 29th of August. There was only room for 1000 registrations for that webinar, and it was sold out. Were you among the many who were unable to register for that webinar because 1000 people signed up before you? If so, then you have another chance. We will repeat this sold-out webinar on Wednesday, September 26. Again there will only be room for 1000 registrants, so don't be left out. We have scheduled this webinar for times when people in Europe and Asia are likely to be awake. About the webinar. ePCT is WIPO's new system which permits applicants and practitioners to gain access to PCT patent applications within the International Bureau. Attend this webinar to learn why you should be using ePCT and to learn how to use ePCT. Learn Best Practices for the use of ePCT. Corporate people -- Learn how your outside counsel can and should give you access to your PCT applications in ePCT. Learn how you can use ePCT to monitor the status of your PCT applications and to learn of significant events affecting your PCT applications. Learn how ePCT can inform you each time any new document is added to the file for any of your PCT applications. Private firms -- Learn how you can give access through ePCT to your clients. Learn how you can give access to the foreign firms who will be entering the national phase from a PCT application according to your instructions. Learn how you can make use of ePCT when a foreign firm entrusts to you the task of entering the national stage from a PCT application. Everyone -- Learn how you can use ePCT to gain access to information that you cannot get any other way -- not through Patentscope, not through PAIR. Learn how you can receive automatic updates of status for your PCT applications. When? The starting time is 8:00 UTC (GMT) Wednesday, September 26, 2012. For your convenience we note that this starting time is the same as: Geneva (Switzerland ) Wednesday, September 26, 2012 at 10:00 AM CEST Beijing (China) Wednesday, September 26, 2012 at 4:00 PM CST London (United Kingdom) Wednesday, September 26, 2012 at 9:00 AM BST Tokyo (Japan) Wednesday, September 26, 2012 at 5:00 PM JST Seoul (South Korea) Wednesday, September 26, 2012 at 5:00 PM KST Sydney (Australia) Wednesday, September 26, 2012 at 6:00 PM EST Denver (U.S.A.) Wednesday, September 26, 2012 at 2:00 AM MDT The webinar is scheduled to last 1¾ hours. Note that when you sign up, you are signing up for the one time that the program is being offered. Do not think that we are offering webinars at seven different times. If you want to know what time the webinar will begin in your time zone, please click on the registration link and click on "Show in my Time Zone". You can see: WIPO's User Guide to ePCT WIPO's FAQ about ePCT WIPO's Getting Started guide for ePCT WIPO first started beta-testing ePCT in January of 2011, at which time Oppedahl Patent Law Firm was among the handful of firms and companies invited to beta-test the system and to make suggestions for improvement. By now the people of OPLF have been using ePCT for more than a year. In this webinar, Professor Oppedahl draws upon more than a year and a half of intensive use of the ePCT system. Who should attend this webinar? Corporate patent applicants (located anywhere in the world) that have filed at least one PCT application Patent practitioners anywhere in the world who have filed at least one PCT application Understanding and using ePCT http://www.oppedahl.com/cle/epct/ 1 of 3 9/16/2012 4:16 AM

Transcript of Understanding and using ePCT - Oppedahl · 1 Learning and Using ePCT Webinar September 26, 2012...

Page 1: Understanding and using ePCT - Oppedahl · 1 Learning and Using ePCT Webinar September 26, 2012 Carl Oppedahl Oppedahl Patent Law Firm LLC 2 Format and schedule This is a webinar

Understanding and using ePCT

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

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

register for that webinar because 1000 people signed up before you?

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

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

times when people in Europe and Asia are likely to be awake.

About the webinar. ePCT is WIPO's new system which permits applicants and practitioners to gain

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

should be using ePCT and to learn how to use ePCT. Learn Best Practices for the use of ePCT.

Corporate people -- Learn how your outside counsel can and should give you access to your PCT

applications in ePCT. Learn how you can use ePCT to monitor the status of your PCT applications and to

learn of significant events affecting your PCT applications. Learn how ePCT can inform you each time any

new document is added to the file for any of your PCT applications.

Private firms -- Learn how you can give access through ePCT to your clients. Learn how you can give

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

your instructions. Learn how you can make use of ePCT when a foreign firm entrusts to you the task of

entering the national stage from a PCT application.

Everyone -- Learn how you can use ePCT to gain access to information that you cannot get any other way

-- not through Patentscope, not through PAIR. Learn how you can receive automatic updates of status for

your PCT applications.

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

note that this starting time is the same as:

Geneva (Switzerland ) Wednesday, September 26, 2012 at 10:00 AM CEST

Beijing (China) Wednesday, September 26, 2012 at 4:00 PM CST

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

Tokyo (Japan) Wednesday, September 26, 2012 at 5:00 PM JST

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

Sydney (Australia) Wednesday, September 26, 2012 at 6:00 PM EST

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

The webinar is scheduled to last 1¾ hours.

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

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

begin in your time zone, please click on the registration link and click on "Show in my Time Zone".

You can see:

WIPO's User Guide to ePCT

WIPO's FAQ about ePCT

WIPO's Getting Started guide for ePCT

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

among the handful of firms and companies invited to beta-test the system and to make suggestions for

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

Professor Oppedahl draws upon more than a year and a half of intensive use of the ePCT system.

Who should attend this webinar?

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

application

Patent practitioners anywhere in the world who have filed at least one PCT application

Understanding and using ePCT http://www.oppedahl.com/cle/epct/

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

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

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

prepared for this webinar.

The faculty. Your professor is Carl Oppedahl, a partner in OPLF. Carl previously served as

the chair of the AIPLA PCT Issues Committee and is now a member of the Board of Directors

of AIPLA. He has spent more than twenty years writing and prosecuting patent applications for

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

Advanced Patent Law.

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

complete an evaluation. One of the questions was "would you recommend this webinar to others?" One

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

Yes, it was informative and very helpful

Yes, other attorneys, secretaries, assistants and docket clerks from my firm

Yes, especially those with no prior experience with efiling

Yes, everyone at my firm

Yes, definitely

Yes, most certainly

CLE accreditation?

CLE accreditation has been approved for California for 1¾ credits. In the short time between now and the

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

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

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

authority. Please do not ask us to try to obtain CLE accreditation from other states.

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

CLE agency.

Frequently asked questions

Q. Is this webinar only for US filers?

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

of geographic location or choice of Receiving Office.

Cost? The webinar is free of charge.

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

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

up one of the 1000 available signups for someone else.

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

law firm and corporate locations, the presentation-slide content of the webinar will be projected upon a

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

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

Participants will be able to submit typed questions through the webinar system.

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

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

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

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

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

per-minute long-distance telephone charges.

Understanding and using ePCT http://www.oppedahl.com/cle/epct/

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

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

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

webinar will be successful.

Understanding and using ePCT http://www.oppedahl.com/cle/epct/

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Learning and Using ePCT

WebinarSeptember 26, 2012

Carl OppedahlOppedahl Patent Law Firm LLC

www.oppedahl.com

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Format and schedule

● This is a webinar

● Please submit questions using the “chat” system

● I will try to answer questions as they arise

● The webinar is scheduled to finish in about 1¾ hours, maybe a little sooner depending on how many questions we have

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What is ePCT?

● ePCT is WIPO's new system permitting access to application files and information that is otherwise kept secret within the International Bureau

● It lets a filer see an application file even before 18-month publication has occurred

● It lets a filer see a Written Opinion and IPRP prior to the arrival of the 30-month date

● It permits selective access to a file by clients, inventors, and others

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What is ePCT?

● It provides automatic reminders of upcoming due dates such as the 30-month date

● You can withdraw an IA

● You can withdraw a priority claim

● You can submit a 92bis change

● It provides immediate feedback as to whether a change (such as a Rule 92bis change) has been acted upon

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What is ePCT?

● It lets you see and copy detailed bibliographic data

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What will ePCT be next?

Real Soon Now, epCT will allow you to carry out online web filing of new international applications (N.B. It is currently NOT possible to use ePCT to file a new international application)

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Why is it imperative that you learn to use ePCT?

● It will soon be as crucial to your daily tasks as the use of other patent office systems (for example Private PAIR) is now

● It will permit corporate counsel to have better control and oversight of outside counsel

● It will permit forward-thinking private patent firms to provide controlled access to clients and foreign colleagues

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What does it cost to use ePCT?

● There is no out-of-pocket cost to use ePCT

● Each user will have to spend a modest amount of time setting up an ePCT user account and a WIPO cryptographic certificate

● This only needs to be done once per user

● Getting an application linked to ePCT is easy

● Extending access to a new person is easy

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Another benefit of ePCT

● With ePCT you will learn of outgoing correspondence before it happens

● This gives you advance warning if action is required

● This permits you to docket things sooner

● Even if legacy inbound correspondence were to get lost, you will have the notification from ePCT

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Another benefit of the correspondence notifications

● For example the form that says that the fees have been paid, or the form that says the priority documents have been received …

● This permits you to clear the docket sooner

● This is a Best Practice

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If a case is being handled by outside counsel ...

● The correspondence notification from ePCT will come to you as in-house counsel

● You can make note of how long it takes for outside counsel to report the correspondence to you

● If outside counsel were to screw something up, you would learn of it right away

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Why you want to use ePCT

WIPO will automatically notify you of upcoming due dates:

● Imminent arrival of the 30 months

● Imminent arrival of “too late to withdraw the application” date

● Imminent arrival of due date for Article 19 amendment

● Imminent arrival of due date for Demand

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The 30 months

Here is an actual warning from ePCT:

The 30 months time limit

(end of the international phase)

for PCT/US2010/047989

will expire in 1 month

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Why you want to use ePCT

● Warns you if a priority document is still outstanding

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Why you want to use ePCT

WIPO will automatically notify you of events of possible interest:

● Papers have been filed in the application

● Bibliographic data have changed

● Something will soon be mailed to you relating to the application

● Status of the PCT application has changed

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How to get going with ePCT?

● Get a WIPO crypto certificate

● Sign up for a WIPO user ID and password

● Upload your crypto certificate to the ePCT system

● Gain access to your present and past PCT applications

● Give access to selected PCT applications to colleagues and clients

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Important resources at WIPO web site

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Getting a WIPO crypto certificate

● The process normally takes at least one business day

● Plan ahead by getting your crypto certificate ahead of need

● The certificate can be used for access to ePCT

● The certificate can also be used for e-filing in RO/IB

● You can also use it for e-signing outbound emails and for receiving encrypted emails

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Getting a WIPO crypto certificate● Maybe you already have a WIPO crypto

certificate – for example to be used in e-filing in RO/IB

● Go to

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

● Follow the instructions

Note: make careful note of your “challenge phrase”, keeping it somewhere so that you can find it again two years from now when you will need it for a renewal

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What to do with your crypto certificate when you get it

● Back up the certificate to a safe place so that you can find it when you change computers or reinstall your operating system on your computer

● Use the backup to load the certificate into each computer that you may wish to use in future

● In each computer that you may wish to use in the future, load the certificate into each web browser in that computer

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When you install a new browser ...

● You might install a new browser into your computer (e.g. Firefox, Chrome)

● When you do this, then use the backup of your crypto certificate to install the certificate into that browser

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Sharing your certificate ...

● It should not be necessary to share your WIPO crypto certificate with anyone else, other than for purposes of backing it up

● This is very different from Private PAIR and EFS-Web where it is necessary for each registered practitioner to share his or her certificate with everyone in the office

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Who should obtain a WIPO crypto certificate?

● Each person in your office should obtain his or her own WIPO crypto certificate

● This should be part of your checklist for things that a newly hired person does on his or her first day of work

● If and when a person leaves your employ, it is only a matter of a few mouse clicks to remove that person's access to ePCT files

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After you have yourWIPO crypto certificate

● Go to https://pct.wipo.int/LoginForms/epct.jsp

● Create a WIPO user account

● After the WIPO user account has been created, you should upload the public key of your WIPO crypto certificate to the ePCT system

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When you are creating your ePCT account ...

● Go ahead and enter your mailing address

● This might save a bit of time when you are seeking access to a PCT application

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Uploading your crypto certificate to the ePCT system

Some people find this step to be a bit of a challenge

Note that you are not uploading the entire crypto certificate, but only the public key of your crypto

certificate

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Polling question

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After you have uploaded your certificate to ePCT

● Now you need to gain access to your PCT applications

● This means “back-filling”, that is, gaining access to applications filed as long ago as January 1, 2009.

● This means gaining access to applications filed going forward

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After you have gained access to your PCT applications

● Now you can provide access to your colleagues and co-workers

● Each of them must obtain his or her own WIPO crypto certificate

● Each of them must create a WIPO user account

● Each of them must upload his or her WIPO crypto certificate to the ePCT system

● Then you can start the “e-handshakes”

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Doing e-handshakes

● You can extend an e-handshake invitation to a colleague or co-worker

● He or she can accept the invitation

● Then you can give him or her access to one or more PCT applications in the ePCT system

● Except not if they have this symbol!

“User account not authenticated”

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Polling question

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Setting up a list of IDs

● Within your office, set up an intranet page listing everybody's Customer IDs (ePCT account names)

● This makes it quicker and easier to accomplish e-handshakes

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e-viewer or e-editor or e-owner?

● When you give someone access to a file in ePCT, you get to pick whether to make the person an e-owner or an e-editor or an e-viewer

● an e-owner can do more things including changing (editing) who has access

● an e-editor cannot change (edit) who has access

● an e-viewer can only look but cannot change anything

● In general if you are unsure whether to make someone an e-editor or an e-owner, make them an e-viewer. You can always upgrade their access later to e-editor or e-owner if you wish.

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At least two e-owners

● It is a Best Practice always to have at least two e-owners for each PCT application

● This provides a redundant path if any one user's user ID is compromised or if an e-owner leaves the employ of the company or firm

● As an example, in a law firm perhaps each partner should be an e-owner for each PCT application

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Gaining access to applications

● The procedure for gaining access to a PCT application will be different depending on …

● Whether it has been published

● Whether a 92bis change has been filed

● Whether it was originally filed in the RO/IB or elsewhere

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A new docket procedure

You should set up a new docket procedure, namely what to do when you receive Form PCT/IB/301 (“Notification of Receipt of Record Copy”).

When you receive this Form, make careful note of:

● The international application number

● The international filing date

● The secret code at the bottom of the page

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A new docket procedure

To gain access to the application, enter these three pieces of information into ePCT

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The secret code number is not enough

● For a case filed in RO/IB, ePCT will check to see if the crypto certificate that was used to e-file the application is among those that you uploaded to your ePCT account

● If they match, and if the other three items are correct, then ePCT will give you access

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If the application has been published ...

● If the application has been published, then anyone can see Form PCT/IB/301 in Patentscope

● The secret code number is thus known to everyone

● The secret code number cannot be employed to determine who can gain access to the file in ePCT

● Some other approach is required

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The secret code number is not enough

● For a case filed in an RO other than RO/IB, that has not yet been published, ePCT will ask for the three pieces of information (including the secret code number) and will also ask for something else, such as the number of the highest numbered claim

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Best practice for newly filed PCT applications

● The Best Practice is to use PCT-SAFE FM (Forms Manager) to prepare the Request

● Include an “e-ownership code” in the Request (as will be described)

● e-file the Request with the e-ownership code inside

● This will automatically make the IA available in ePCT

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Best practice for newly filed PCT applications

● To get the e-ownership code ….

● Go to ePCT, click on “eOwnership”

● Click on “Request eOwnership Code”

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In PCT-SAFE FM ...

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Flexible ...

● There is no requirement that the person whose WIPO user ID is entered into the Request (the person who will gain immediate access to the application in ePCT) be the same person as the person whose WIPO crypto certificate is used to e-sign the PCT application nor need it be the same person as the person whose WIPO crypto certificate is used to secure the e-filing in PCT-SAFE FM (if you file in RO/IB).

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Works with many kinds of filing

● This approach works in any Receiving Office so long as you communicate things in a computer-readable way when you file the PCT application.

● PCT-EASY mode (the diskette or CD-ROM)

● EFS-Web using the ZIP file in RO/US

● PCT-SAFE FM e-filing in RO/IB

PCT-L list members have successfully used this approach for access in ePCT

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For a published case

● For a published case, you can ask for access and this will prompt the IB to reach out to the agent or correspondent

● The IB will send a new secret code number to the agent or correspondent

● The new secret code number cannot be used by just anyone

● The new secret code number can only be used by the particular ePCT user who requested the new secret code number

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Gaining access to legacy cases

● You will want to gain access to each newly filed PCT application

● You will also want to gain access to all of your pending PCT applications (“legacy applications”)

● This requires a one-time process for each legacy application

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If a case has already been published, why do I care about gaining access to it in ePCT?

There are many reasons to care:

● Patentscope will not let you see the Written Opinion of the ISA until 30 months, while ePCT will let you see it immediately

● Patentscope will not let you see Chapter II documents (e.g. WO-II and IPRP-II) until 30 months, while ePCT will let you see them immediately

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If a case has already passed 30 months, why do I care about gaining

access to it in ePCT?● There are some things that are never visible in

Patentscope, that are visible in ePCT

● If there were some gap in your file, ePCT makes it very easy to fill that gap

● You can use ePCT as a searchable database to find answers to questions about your portfolio

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How far back can I go?

● Any PCT application filed on or after 1 January 2009 can be loaded into ePCT

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How far back should I go?● At a minimum you should load every pending

PCT case

● This means every PCT case that was filed (or whose priority application was filed) within about the past 2½ years

● This will among other things give you the automatic warning about the imminent 30 months

● The Best Practice is to go “all the way back” to January 1, 2009

● You never know when you may need something in a hurry

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New docket procedure – pub preview

● When a newly filed case is visible in ePCT …

● Print out the “preview” of the publication front page

● Proofread all bibliographic data including spelling of applicant and inventor names

● Make sure all priority claims are present and accurate

● Make corrections as necessary

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Filing things with the IB

● Legacy practice for many filers is to file papers at the RO and leave it to the RO to pass papers on to the IB

● For many categories of papers (including 92bis, 26bis), this is not a Best Practice

● Legacy practice for many filers is to use fax or physical delivery to file things at the IB

● This is not a Best Practice

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Filing follow-on papers with the IB

● Better to e-file than using other ways of filing

● That way the paper gets into the correct file automatically

● The “upload service” was phased out on July 1, 2012

● The Best Practice is to learn how to use ePCT for filing follow-on papers with the IB

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Constructable links

ePCT provides constructable links. See for example a link such as

https://pct.wipo.int/ePCT/faces/en/private/iaSearch.xhtml?iaNo=PCT/IB2012/050279

This link may be constructed by the user, listing any international application number (that is available to the user in the ePCT system).

You can use this in your intranet or client extranet.

This represents an improvement relative to the PAIR system.

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Note that these are “deep links”

● The constructable links are "deep links".

● Such a link will then reach the particular and specific ePCT page for that international application (if it is in ePCT and if the user has appropriate login credentials). The page will have a tab already opened to the detail information for the international application.

● This is a great improvement over Private PAIR.

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An e-handshake is not the same thing as giving access to a file

You will be giving a person access to a file only if you do two things:

● you make the person becomes an e-handshake “friend”, and

● You take the further step of giving that person “access” to a file

Making someone an e-handshake “friend” does not, by itself, give the person access to any files!

63

How corporate patent departments should use ePCT

● Suppose a PCT application of yours is in the hands of outside counsel

● Outside counsel should already be using ePCT

● Outside counsel should give you access to the PCT application in ePCT

● Because outside counsel should already be using ePCT, and because it only takes two or three mouse clicks to give you access, you should not be billed for such access

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64

If you are the filer ...

● You should of course use ePCT yourself

● You should encourage clients and inventors to join the ePCT system

● You can then give them e-editor access to particular PCT applications

65

ePCT plays a crucial role for transferred-in cases

● Whenever a PCT case filed by other counsel is transferred to you …

● It is a Best Practice to gain access to the application in ePCT

● This lets you see any surprises that might be in the file

● This lets you see the Written Opinion

● This lets you conduct searches and generate reports including this case

66

For a transferred-in case

● Hopefully prior counsel already e-filed a DCR (designation of common representative) for each inventor

● If not, then you should do this

● Then it only requires one more document (a Power of Attorney from the Common Representative to you) to establish the new Power of Attorney

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67

For a transferred-out portfolio

● The client should direct former counsel to do e-handshakes with new counsel

● Former counsel should then give e-access to the entire portfolio to new counsel, making them e-owners

● This requires only a half a dozen mouse clicks

● This gives new counsel full and instant access to all transferred cases

68

Consequence of 92bis change?

Submitting a Rule 92bis change request will cause all online access to the international application to be suspended until the International Bureau has processed the request and verified any affect the Rule 92bis change might have on current access rights to the IA.

Plan ahead and make all other changes or actions before submitting the 92bis change.

69

Other handy functions

● Display time line for a particular PCT application

● Display IASR (international application status report)

● Post a note

● Post a warning

● Display detailed bibliographic data

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70

Bibliographic data ...

71

Searching and filtering ...

72

Third-party observations

● Third parties are now able to make “observations” regarding PCT applications that are in the international phase

● This may be done up to the 28th month

● You should make sure all of your cases are in ePCT so that you will receive automatic notifications of such observations

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73

If someone makes an “observation” regarding one of your PCT

applications ...

● You may wish to respond

● You may do so through the ePCT system, any time before the end of the 30 months

● Your response will accompany the observation when it is communicated to a DO/EO

74

If someone makes an “observation” ...

● So far as a US designation or continuation is concerned, you may wish to file an Information Disclosure Statement with the USPTO to make a clear record that the references from the observation are considered by the Examiner

● The US practitioner who is handling a US national-phase case or a continuation will need to check ePCT or Patentscope carefully to look for such observations

75

You can disclose references ...

● ePCT also permits an applicant to submit “observations on close prior art”

● This is rather like filing an IDS in US practice

● The observations will be notified to the ISA (if the international search report has not yet been received by the IB), to the IPEA (if applicable and the international preliminary report on patentability has not been received by the IB) and to DOs. It is up to the individual Offices to decide what use to make of an observation

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76

You can disclose references ...

● If the applicant has disclosed references through ePCT, then probably an Information Disclosure Statement needs to be filed in the US national phase or continuation case …

● To ensure that there will be a clear record that the Examiner has considered such references

● Again this means that US counsel need to check ePCT or Patentscope to see if there are such references

77

How to keep up to date

● Join the PCT-L listserv

● Instructions at www.oppedahl.com/pct

● You can always unsubscribe later if you wish

78

Polling question

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79

Thank you!

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Oppedahl Patent Law Firm LLC

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Our Products >> Books >> Guide for Preparation of Patent Drawings

Guide for Preparation of Patent Drawings

The authoritative guide to the preparation of patent drawings for filing in the United States

Patent and Trademark Office. Topics include:

A section by an experienced practitioner (Carl Oppedahl of Oppedahl Patent Law Firm LLC) on

best practices for creating drawings for electronic filing, with examples of ways that USPTO's

systems can degrade perfectly good drawings and tips for avoiding such problems.

A section by an experienced practitioner (Margaret L. Polson of Oppedahl Patent Law Firm

LLC) on best practices for creating drawings for design patent applications.

PROCESSING OF DRAWINGS

Review of Drawings by Office of Initial Patent Examination

Review by USPTO Draftsperson

On Examiner's First (Non-Allowance) Action

On Examiner's Subsequent Actions

On Allowance

After Allowance

SELECTED U.S. LAWS AND RULES OF PRACTICE RELATING TO PATENT

DRAWINGS

35 USC § 113 Drawings

37 CFR § 1.58 Chemical and mathematical formulae and tables

37 CFR § 1.74 Reference to drawings

37 CFR § 1.81 Drawings required in patent application

37 CFR § 1.83 Content of drawing

37 CFR § 1.84 Standards for drawings

37 CFR § 1.85 Corrections to drawings

37 CFR § 1.96 Submission of computer program listings

37 CFR § 1.121 Manner of making amendments in applications

37 CFR § 1.151 Rules applicable [Designs]

37 CFR § 1.152 Design drawings

37 CFR § 1.161 Rules applicable [Plants]

37 CFR § 1.165 Plant drawings

37 CFR § 1.171 Application for reissue

37 CFR § 1.173 Reissue specification, drawings, and amendments

37 CFR § 1.211 Publication of applications

37 CFR § 1.215 Patent application publication

37 CFR § 1.437 The drawings [International Applications]

37 CFR § 1.530 Statement by patent owner in ex parte reexamination;

amendment by patent owner in ex parte or inter partes reexamination;

inventorship change in ex parte or inter partes reexamination

Article 7 of Patent Cooperation Treaty and Selected PCT Rules Pertaining to

Drawings

Symbols

Drawing Examples

Black ink

Black ink [computer screen image]

Identification of drawings

Graphic forms in drawings [chemical formulae]

Graphic forms in drawings [waveforms]

Graphic forms in drawings [DNA structures]

Views

Exploded views

Partial views

Sectional views

Alternate position

Modified forms

Arrangement of views

Front page view

Our Products

Audio-visual educationalprograms

Audio educational programs

Books

Swag

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Terms and Conditions About Us

Copyright © 2008-2012 Oppedahl Patent Law Firm LLC. All rights reserved.

Item #: 21

* Marked fields are required.

Qty* 1

Price $24.95

Availability In-Stock

Character of lines, numbers, and letters

Shading [spaced lines]

Shading [stippling]

Symbols

Legends

Numbers, letters, and reference characters

Lead lines

Arrows

Copyright or Mask Work Notice

Numbering of sheets of drawings

Numbering of views

Paperback: 152 pages

Publisher: Penaya Publishing

ISBN: 978-0984408436

Dimensions: 9.6 x 6.7 x 0.3 inches

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UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE

To be completed by provider

Provider: Oppedahl Patent Law Firm, LLC

Title of Activity: Understanding and using ePCT

Date of Activity: September 26, 2012

Location: Webinar

Activity Number: California 15406

Total eligible CLE Credit Hours (60 – minute hour): 1¾

Legal Ethics Credit (60 – minute hour): 0

To be completed by the Attorney after Participating in the Above-Named Activity:

By signing below, I certify that I participated in the activity described above and am entitled to claim the following CLE credit hours:

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