top of page
  • Writer's picturemail

Does the advent ePCT for filing PCT Applications Reduce Costs?

As a regular filer of PCT international applications, I am often asked if there are more economical ways to file an international application under the Patent Cooperation Treaty. The simple answer is "no."

The advent of the ePCT is simply another way in which we will be able to file EP, Euro-PCT and PCT applications, submissions in opposition, appeals, limitation and revocation proceedings before the EPO and subsequently file documents for all EP proceedings. You can also use it to file applications and documents with participating national offices. Please visit the WIPO website for frequently asked questions for offices and general questions: pct/epct_office_faq.html

For those of us who file through the U. S. Receiving Office, the present vehicle suffices. While the PCT is a non-granting entity, it does provide you a track by which you can determine if applicant's invention on paper (the application) needs adjustment. The International Search Report and Written Opinion, while non-binding to patent offices, is a perfect moment in which to reflect what needs to be amended during the international period or once you elect the national and/or regional applications. The fact that the PCT international application currently provides for the possibility of filing national and/or regional phase applications in 152 countries results in a great vehicle. Applicants now also have the possibility, upon publication, to submit an IB- 382 form which is a Request for Indication of Availability for Licensing Purposes which is free of charge and provides applicant the option of seeking direct contact with parties who may be interested in the invention.

The USPTO states under WIPO's Annex C - Receiving offices - "The USPTO accepts the filing of international applications in electronic form according to its national law and technical systems (see Section 703(d) and 703(f)(ii) of the PCT Administrative Instructions). For more information, see application- process/applying- online/about-efs-web. Technical support for filing international applications electronically is available from the Patent Electronic Business Center (EBC) at (1-866) 217 91 97. Note that the applicable national law and technical systems provide for requirements which are different from, and not compatible with, the requirements of Section 703(b)(ii) to (iv) of the PCT Administrative Instructions (see PCT Gazette No. 18/2002, page 8974)). Applicants may, however, use ePCT or PCT -SAFE to generate a .zip file containing a validated request form, and then submit the .zip file electronically via EFS-Web. For further details, see 06/pdf/2016-10733.pdf."

Finally, the more complete an international application, as reviewed by a Patent Attorney or Patent Agent, the better the results for its international processing period of 18 months. Pursuing a sound application is the best of options for the applicant. Prevent rather than correct! It will save time and costs.


bottom of page