81_FR_27505 81 FR 27417 - Use of WIPO's ePCT System for Preparing the PCT Request for Filing as Part of an International Application With the USPTO as Receiving Office

81 FR 27417 - Use of WIPO's ePCT System for Preparing the PCT Request for Filing as Part of an International Application With the USPTO as Receiving Office

DEPARTMENT OF COMMERCE
Patent and Trademark Office

Federal Register Volume 81, Issue 88 (May 6, 2016)

Page Range27417-27418
FR Document2016-10733

The United States Patent and Trademark Office (Office or USPTO), in its capacity as a PCT Receiving Office (RO/US), will begin to accept international applications under the Patent Cooperation Treaty (PCT) that are filed electronically with a PCT Request prepared in the World Intellectual Property Organization's (WIPO) ePCT system. ePCT allows users to generate a zip file containing a validated PCT Request; the zip file can then be submitted electronically to the RO/US as part of an international application filed using the USPTO's electronic filing system (EFS-Web). Because WIPO's ePCT system is web- based and the servers that support the system are located outside the United States, users of ePCT are reminded that the export of subject matter abroad pursuant to a foreign filing license from the USPTO is limited to purposes related to the filing of foreign applications, which include international applications filed in a Receiving Office other than the RO/US. A foreign filing license does not authorize the export of subject matter into ePCT for generating a PCT Request for filing with the RO/US. Persons who are considering the use of WIPO's ePCT system for preparation of the PCT Request for filing as part of an international application with the RO/US should consider contacting the Bureau of Industry and Security (BIS) at the Department of Commerce, the Directorate of Defense Trade Controls (DDTC) at the Department of State, or the National Nuclear Security Administration (NNSA) at the Department of Energy for the appropriate clearances where the international application may include technology subject to export controls.

Federal Register, Volume 81 Issue 88 (Friday, May 6, 2016) 
[Federal Register Volume 81, Number 88 (Friday, May 6, 2016)]
[Notices]
[Pages 27417-27418]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2016-10733]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No.: PTO-P-2015-0064]


Use of WIPO's ePCT System for Preparing the PCT Request for 
Filing as Part of an International Application With the USPTO as 
Receiving Office

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (Office or 
USPTO), in its capacity as a PCT Receiving Office (RO/US), will begin 
to accept international applications under the Patent Cooperation 
Treaty (PCT) that are filed electronically with a PCT Request prepared 
in the World Intellectual Property Organization's (WIPO) ePCT system. 
ePCT allows users to generate a zip file containing a validated PCT 
Request; the zip file can then be submitted electronically to the RO/US 
as part of an international application filed using the USPTO's 
electronic filing system (EFS-Web). Because WIPO's ePCT system is web-
based and the servers that support the system are located outside the 
United States, users of ePCT are reminded that the export of subject 
matter abroad pursuant to a foreign filing license from the USPTO is 
limited to purposes related to the filing of foreign applications, 
which include international applications filed in a Receiving Office 
other than the RO/US. A foreign filing license does not authorize the 
export of subject matter into ePCT for generating a PCT Request for 
filing with the RO/US. Persons who are considering the use of WIPO's 
ePCT system for preparation of the PCT Request for filing as part of an 
international application with the RO/US should consider contacting the 
Bureau of Industry and Security (BIS) at the Department of Commerce, 
the Directorate of Defense Trade Controls (DDTC) at the Department of 
State, or the National Nuclear Security Administration (NNSA) at the 
Department of Energy for the appropriate clearances where the 
international application may include technology subject to export 
controls.

DATES: The change in this notice takes effect on June 1, 2016.

FOR FURTHER INFORMATION CONTACT: Michael Neas, Deputy Director 
(telephone (571) 272-3289; electronic mail message 
([email protected])), International Patent Legal Administration, 
Office of International Patent Cooperation.

SUPPLEMENTARY INFORMATION: The USPTO's electronic filing system (EFS-
Web) enables users to electronically file international applications 
under the PCT with the RO/US. EFS-Web currently permits users to submit 
the PCT Request by uploading a zip file created using PCT Secure 
Applications Filed Electronically (PCT-SAFE) software which is made 
available and maintained by WIPO. The zip file from PCT-SAFE contains a 
validated PCT Request and fee calculation sheet in PDF format, which 
are subsequently loaded in the USPTO's Image File Wrapper (IFW). The 
zip file contains additional files that, among other things, allow the 
USPTO and WIPO to auto-load application bibliographic data. All other 
documents and application parts must be prepared and loaded separately 
in EFS-Web for filing of the international application. Submission of 
the zip file from PCT-SAFE at the time of filing the international 
application entitles the applicant to a reduction of the international 
filing fee. Starting on June 1, 2016, in addition to accepting the zip 
files generated by PCT-SAFE, the RO/US will also begin to accept 
international applications filed electronically with zip files created 
by WIPO's ePCT system. ePCT is a web-based service that provides for 
electronic filing of international applications with certain PCT 
Receiving Offices. ePCT also provides for secure electronic access, 
file management, and document submissions for international 
applications held by the International Bureau (IB). The use of ePCT in 
this manner requires the use of a WIPO user account authenticated with 
a WIPO digital certificate. ePCT is accessed via an internet browser on 
the user's system, and all information input into ePCT is stored 
securely on WIPO's servers. Detailed information on ePCT-Filing can be 
found at http://www.wipo.int/export/sites/www/pct/en/epct/pdf/epct_filing_guidelines.pdf.
    Both PCT-SAFE and ePCT include validation features to help users 
properly complete the PCT Request. Since the PCT-SAFE validation can 
only be made against the version of the software installed on the 
user's system, the most up-to-date version of PCT-SAFE is required in 
order to ensure accurate validation. In contrast to PCT-SAFE, 
validation in the ePCT system is made in real time and does not require 
software updates. Furthermore, like PCT-SAFE, the zip file generated by 
ePCT, which contains a PCT Request in

[[Page 27418]]

character coded format, also entitles the applicant to the same 
reduction in international filing fees as indicated in item 4(b) of the 
PCT Schedule of Fees (http://www.wipo.int/pct/en/texts/rules/rtax.htm#_S). The use of the ePCT zip file would still require all 
other documents and application parts to be prepared and loaded 
separately in EFS-Web for filing of the international application.
    By using ePCT, an international application will be associated with 
the user's ePCT account, even before the application is filed, thereby 
allowing users to share access rights with others prior to filing, if 
needed. In addition, after the record copy is received by the IB, the 
application file may be viewed online via ePCT without the need to 
separately request access rights.
    Applicants who are residents and/or nationals of the United States 
and its territories can file international applications directly with 
the Receiving Office of the IB via ePCT or other means, provided that 
any national security provisions have been met prior to filing, 
including obtaining any required foreign filing license. See 37 CFR 
5.11 and MPEP Sec.  140. A foreign filing license does not, however, 
authorize the use of ePCT to prepare the PCT Request and resultant zip 
file for filing, as part of an international application, with the RO/
US. See 37 CFR 5.15 regarding the scope of a foreign filing license. 
Also see Scope of Foreign Filing Licenses, 73 FR 42781 (July 23, 2008) 
(``A foreign filing license from the USPTO does not authorize the 
exporting of subject matter abroad for the preparation of patent 
applications to be filed in the United States.''). Using ePCT to create 
a PCT Request and resulting zip file for later submission to the RO/US 
does not constitute the ``filing of an application in a foreign country 
or to any foreign patent agency or international patent agency'' as 
provided in 37 CFR 5.15(a). Furthermore, an international application 
filed in the RO/US is not a ``foreign application'' within the meaning 
of 37 CFR 5.15(a) or 5.11(b), which authorize the export of subject 
matter abroad. See 37 CFR 5.1(b)(2). See also 35 U.S.C. 368(b) (``In 
accordance with article 27(8) of the treaty, the filing of an 
international application in a country other than the United States on 
the invention made in this country shall be considered to constitute 
the filing of an application in a foreign country within the meaning of 
chapter 17, whether or not the United States is designated in that 
international application.'').
    As set forth above, a foreign filing license does not authorize the 
export of technical data into ePCT for generating a PCT Request and 
resulting zip file for filing as part of an international application 
with the RO/US. More specifically, to complete the PCT Request and 
generate the zip file, ePCT requires a title of the invention, which 
may contain technical data. Moreover, although an abstract is not 
required for creation of the zip file, ePCT allows users to optionally 
provide the contents of the application abstract, which may also 
contain technical data relating to the invention. Since this technical 
data is stored on servers located outside of the United States, users 
of ePCT are reminded that the export of this subject matter abroad for 
the purpose of filing an international application with the RO/US may 
require the appropriate clearances from the Bureau of Industry and 
Security (BIS) at the Department of Commerce (See Scope of Foreign 
Filing Licenses, supra), the Directorate of Defense Trade Controls 
(DDTC) at the Department of State, or the National Nuclear Security 
Administration (NNSA) at the Department of Energy.
    An ePCT demo system has been set up to enable filers to familiarize 
themselves with the system. For further information and to get started, 
go to the ePCT Portal at: https://pct.wipo.int/ePCT. To begin use of 
ePCT, a user is first required to obtain a WIPO account (https://pct.wipo.int/wipoaccounts/en/ePCT/public/register.jsf) and subsequently 
associate a WIPO digital certificate with the account (https://pct.wipo.int/wipoaccounts/en/ePCT/private/certificates.jsf--requires 
login). Users without a WIPO digital certificate can obtain one from 
https://pct.wipo.int/CertRequest/Verisign/services/WorldIntellectualPropertyOrganizationWIPOCustomerCAV2/client/userEnrollMS.htm.

    Dated: May 2, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2016-10733 Filed 5-5-16; 8:45 am]
 BILLING CODE 3510-16-P

Federal Register / Vol. 81, No. 88 / Friday, May 6, 2016 / Notices 27417 Time Discussion item Presenter 11:30 a.m.–12 noon ............... Communications Group Report ................................................................... Kitty Simonds. 12 noon–1:30 p.m. ................. Lunch. 1:30 p.m.–3 p.m. .................... Compliance with NS2: BSIA used by Council/NMFS for stock status de- Tom Nies/Gregg Waugh/Jane termination, specifications (OFL/ABC/ACL), and model selection. DiCosimo. —Issues and examples. —Agency process to determine BSIA for Stock Status. 3 p.m.–3:15 p.m. .................... Coffee Break. 3:15 p.m.–3:45 p.m. ............... SSC Subcommittee. —Agenda items for 2017 Meeting. 3:45 p.m.–4:15 p.m. ............... Other Business. 4:15 p.m.–4:45 p.m. ............... Next CCC Meeting (2017) ........................................................................... Tom Nies. The order in which the agenda items submitted electronically to the RO/US PCT–SAFE contains a validated PCT are addressed may change. The CCC as part of an international application Request and fee calculation sheet in will meet as late as necessary to filed using the USPTO’s electronic filing PDF format, which are subsequently complete scheduled business. system (EFS-Web). Because WIPO’s loaded in the USPTO’s Image File Copy of the tentative agenda can be ePCT system is web-based and the Wrapper (IFW). The zip file contains found at the CFMC Web page: servers that support the system are additional files that, among other things, www.caribbeanfmc.com. located outside the United States, users allow the USPTO and WIPO to auto- of ePCT are reminded that the export of load application bibliographic data. All Special Accommodations subject matter abroad pursuant to a other documents and application parts These meetings are physically foreign filing license from the USPTO is must be prepared and loaded separately accessible to people with disabilities. limited to purposes related to the filing in EFS-Web for filing of the For more information or request for sign of foreign applications, which include international application. Submission of language interpretation and other international applications filed in a the zip file from PCT–SAFE at the time auxiliary aids, please contact Mr. Receiving Office other than the RO/US. of filing the international application Miguel A. Rolón, Executive Director, A foreign filing license does not entitles the applicant to a reduction of Caribbean Fishery Management Council, authorize the export of subject matter the international filing fee. Starting on 270 Muñoz Rivera Avenue, Suite 401, into ePCT for generating a PCT Request June 1, 2016, in addition to accepting San Juan, Puerto Rico, 00918–1903, for filing with the RO/US. Persons who the zip files generated by PCT–SAFE, telephone (787) 766–5926, at least 5 are considering the use of WIPO’s ePCT the RO/US will also begin to accept days prior to the meeting date. system for preparation of the PCT international applications filed Dated: May 2, 2016. Request for filing as part of an electronically with zip files created by international application with the WIPO’s ePCT system. ePCT is a web- Alan D. Risenhoover, RO/US should consider contacting the based service that provides for Director, Office of Sustainable Fisheries, Bureau of Industry and Security (BIS) at National Marine Fisheries Service. electronic filing of international the Department of Commerce, the applications with certain PCT Receiving [FR Doc. 2016–10650 Filed 5–5–16; 8:45 am] Directorate of Defense Trade Controls Offices. ePCT also provides for secure BILLING CODE 3510–22–P (DDTC) at the Department of State, or electronic access, file management, and the National Nuclear Security document submissions for international Administration (NNSA) at the applications held by the International DEPARTMENT OF COMMERCE Department of Energy for the Bureau (IB). The use of ePCT in this Patent and Trademark Office appropriate clearances where the manner requires the use of a WIPO user international application may include account authenticated with a WIPO [Docket No.: PTO–P–2015–0064] technology subject to export controls. digital certificate. ePCT is accessed via DATES: The change in this notice takes an internet browser on the user’s Use of WIPO’s ePCT System for effect on June 1, 2016. Preparing the PCT Request for Filing system, and all information input into FOR FURTHER INFORMATION CONTACT: ePCT is stored securely on WIPO’s as Part of an International Application Michael Neas, Deputy Director servers. Detailed information on ePCT- With the USPTO as Receiving Office (telephone (571) 272–3289; electronic Filing can be found at http:// AGENCY: United States Patent and mail message www.wipo.int/export/sites/www/pct/en/ Trademark Office, Commerce. (michael.neas@uspto.gov)), epct/pdf/epct_filing_guidelines.pdf. ACTION: Notice. International Patent Legal Both PCT–SAFE and ePCT include Administration, Office of International validation features to help users SUMMARY: The United States Patent and Patent Cooperation. properly complete the PCT Request. Trademark Office (Office or USPTO), in SUPPLEMENTARY INFORMATION: The Since the PCT–SAFE validation can its capacity as a PCT Receiving Office USPTO’s electronic filing system (EFS- only be made against the version of the (RO/US), will begin to accept Web) enables users to electronically file software installed on the user’s system, asabaliauskas on DSK3SPTVN1PROD with NOTICES international applications under the international applications under the the most up-to-date version of PCT– Patent Cooperation Treaty (PCT) that are PCT with the RO/US. EFS-Web SAFE is required in order to ensure filed electronically with a PCT Request currently permits users to submit the accurate validation. In contrast to PCT– prepared in the World Intellectual PCT Request by uploading a zip file SAFE, validation in the ePCT system is Property Organization’s (WIPO) ePCT created using PCT Secure Applications made in real time and does not require system. ePCT allows users to generate a Filed Electronically (PCT–SAFE) software updates. Furthermore, like zip file containing a validated PCT software which is made available and PCT–SAFE, the zip file generated by Request; the zip file can then be maintained by WIPO. The zip file from ePCT, which contains a PCT Request in VerDate Sep<11>2014 17:20 May 05, 2016 Jkt 238001 PO 00000 Frm 00031 Fmt 4703 Sfmt 4703 E:\FR\FM\06MYN1.SGM 06MYN1

27418 Federal Register / Vol. 81, No. 88 / Friday, May 6, 2016 / Notices character coded format, also entitles the As set forth above, a foreign filing Square, 401 F Street NW., Washington, applicant to the same reduction in license does not authorize the export of DC 20001–2728. Items of discussion international filing fees as indicated in technical data into ePCT for generating may include buildings, parks and item 4(b) of the PCT Schedule of Fees a PCT Request and resulting zip file for memorials. (http://www.wipo.int/pct/en/texts/rules/ filing as part of an international Draft agendas and additional rtax.htm#_S). The use of the ePCT zip application with the RO/US. More information regarding the Commission file would still require all other specifically, to complete the PCT are available on our Web site: documents and application parts to be Request and generate the zip file, ePCT www.cfa.gov. Inquiries regarding the prepared and loaded separately in EFS- requires a title of the invention, which agenda and requests to submit written Web for filing of the international may contain technical data. Moreover, or oral statements should be addressed application. although an abstract is not required for to Thomas Luebke, Secretary, U.S. By using ePCT, an international creation of the zip file, ePCT allows Commission of Fine Arts, at the above application will be associated with the users to optionally provide the contents address; by emailing cfastaff@cfa.gov; or user’s ePCT account, even before the of the application abstract, which may by calling 202–504–2200. Individuals application is filed, thereby allowing also contain technical data relating to requiring sign language interpretation users to share access rights with others the invention. Since this technical data for the hearing impaired should contact prior to filing, if needed. In addition, is stored on servers located outside of the Secretary at least 10 days before the after the record copy is received by the the United States, users of ePCT are meeting date. IB, the application file may be viewed reminded that the export of this subject Dated: 26 April 2016, in Washington, DC. online via ePCT without the need to matter abroad for the purpose of filing Thomas Luebke, separately request access rights. an international application with the Secretary. Applicants who are residents and/or RO/US may require the appropriate [FR Doc. 2016–10402 Filed 5–5–16; 8:45 am] nationals of the United States and its clearances from the Bureau of Industry BILLING CODE 6330–01–M territories can file international and Security (BIS) at the Department of applications directly with the Receiving Commerce (See Scope of Foreign Filing Office of the IB via ePCT or other Licenses, supra), the Directorate of Defense Trade Controls (DDTC) at the COMMITTEE FOR PURCHASE FROM means, provided that any national Department of State, or the National PEOPLE WHO ARE BLIND OR security provisions have been met prior Nuclear Security Administration SEVERELY DISABLED to filing, including obtaining any required foreign filing license. See 37 (NNSA) at the Department of Energy. Procurement List; Additions and CFR 5.11 and MPEP § 140. A foreign An ePCT demo system has been set Deletions filing license does not, however, up to enable filers to familiarize authorize the use of ePCT to prepare the themselves with the system. For further AGENCY: Committee for Purchase From PCT Request and resultant zip file for information and to get started, go to the People Who Are Blind or Severely filing, as part of an international ePCT Portal at: https://pct.wipo.int/ Disabled. application, with the RO/US. See 37 ePCT. To begin use of ePCT, a user is ACTION: Additions to and Deletions from CFR 5.15 regarding the scope of a first required to obtain a WIPO account the Procurement List. foreign filing license. Also see Scope of (https://pct.wipo.int/wipoaccounts/en/ Foreign Filing Licenses, 73 FR 42781 ePCT/public/register.jsf) and SUMMARY: This action adds products to (July 23, 2008) (‘‘A foreign filing license subsequently associate a WIPO digital the Procurement List that will be from the USPTO does not authorize the certificate with the account (https:// furnished by the nonprofit agency exporting of subject matter abroad for pct.wipo.int/wipoaccounts/en/ePCT/ employing persons who are blind or the preparation of patent applications to private/certificates.jsf—requires login). have other severe disabilities, and be filed in the United States.’’). Using Users without a WIPO digital certificate deletes services from the Procurement ePCT to create a PCT Request and can obtain one from https:// List previously provided by such resulting zip file for later submission to pct.wipo.int/CertRequest/Verisign/ agencies. the RO/US does not constitute the services/WorldIntellectualProperty DATES: Effective on June 5, 2016. ‘‘filing of an application in a foreign OrganizationWIPOCustomerCAV2/ ADDRESSES: Committee for Purchase country or to any foreign patent agency client/userEnrollMS.htm. From People Who Are Blind or Severely or international patent agency’’ as Dated: May 2, 2016. Disabled, 1401 S. Clark Street, Suite provided in 37 CFR 5.15(a). Michelle K. Lee, 715, Arlington, Virginia, 22202–4149. Furthermore, an international Under Secretary of Commerce for Intellectual FOR FURTHER INFORMATION CONTACT: application filed in the RO/US is not a Property and Director of the United States Barry S. Lineback, Telephone: (703) ‘‘foreign application’’ within the Patent and Trademark Office. 603–7740, Fax: (703) 603–0655, or email meaning of 37 CFR 5.15(a) or 5.11(b), [FR Doc. 2016–10733 Filed 5–5–16; 8:45 am] CMTEFedReg@AbilityOne.gov. which authorize the export of subject BILLING CODE 3510–16–P SUPPLEMENTARY INFORMATION: matter abroad. See 37 CFR 5.1(b)(2). See also 35 U.S.C. 368(b) (‘‘In accordance Additions with article 27(8) of the treaty, the filing COMMISSION OF FINE ARTS On 12/11/2015 (80 FR 76948), the of an international application in a asabaliauskas on DSK3SPTVN1PROD with NOTICES Committee for Purchase From People country other than the United States on Commission of Fine Arts; Notice of Who Are Blind or Severely Disabled the invention made in this country shall Meeting published notice of proposed additions be considered to constitute the filing of to the Procurement List. an application in a foreign country The next meeting of the U.S. within the meaning of chapter 17, Commission of Fine Arts is scheduled Regulatory Flexibility Act Certification whether or not the United States is for 19 May 2016, at 9:00 a.m. in the I certify that the following action will designated in that international Commission offices at the National not have a significant impact on a application.’’). Building Museum, Suite 312, Judiciary substantial number of small entities. VerDate Sep<11>2014 17:20 May 05, 2016 Jkt 238001 PO 00000 Frm 00032 Fmt 4703 Sfmt 4703 E:\FR\FM\06MYN1.SGM 06MYN1


Document Created: 2016-05-06 00:29:53
Document Modified: 2016-05-06 00:29:53
CategoryRegulatory Information
CollectionFederal Register
sudoc ClassAE 2.7:
GS 4.107:
AE 2.106:
PublisherOffice of the Federal Register, National Archives and Records Administration
SectionNotices
ActionNotice.
DatesThe change in this notice takes effect on June 1, 2016.
ContactMichael Neas, Deputy Director (telephone (571) 272-3289; electronic mail message ([email protected])), International Patent Legal Administration, Office of International Patent Cooperation.
FR Citation81 FR 27417 
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