Epct National Phase Entry

April 25, 2013 ePCT NATIONAL PHASE ENTRY

INTRODUCTION 1. In response to discussions in the Global Dossier Task Force, the International Bureau made a proposal1 to allow requests for national phase entry to be made to designated Offices through the ePCT system, taking advantage of bibliographic data already available in the International Bureau’s systems to minimize work and risk of transcription errors for applicants.

2. Comments were received from Sam Helfgott (IPO), Hiroshi Takenaka (JIPA), SIPO, KIPO and JPO2. This document seeks to clarify the proposal and to answer some of the questions specifically raised in those comments.

MOCKUP 3. To better illustrate the general intentions of the proposal, the International Bureau has prepared a mockup of the main screen for preparing and submitting national phase entry requests. This mockup is shown below, followed by a detailed description of how it would be used for the main actions involved.

4. It is envisaged that the International Bureau would make two “actions”3 available through ePCT:

(a) Add information for national phase entry – an option open to most or all people with access to the relevant international application (eViewer or eEditor rights). The user could associate bibliographic data or documents with the international application in preparation for a national phase entry request.

(b) Request national phase entry – an option open only to users with a higher level of access rights (eEditor or eOwner). The functions would be exactly the same as the above, except that in addition to adding data and documents, the user could actually submit the request for national phase entry.

5. A wireframe mockup of the main screen for the second action is shown below, showing how the information for different designated Offices could be summarized – the details could be shown and edited in additional screen segments which would be displayed on selecting the relevant link. The screen for the first action would differ only by lacking the checkboxes and button for submitting the request.

1 Description and sample XML and forms vailable from http://www.wipo.int/efiling_standard/en/pre-pfc/ 2 Posted on the IdeaScale website at http://gdi.ideascale.com/a/dtd/ePCT-national-phase-entry/426186- 22474 3 In ePCT, “action” is the term used for processes which are driven by the user entering directly machine-processable data, rather than merely uploading documents for the International Bureau to read and act on manually. 1(a) Filter option 1(b) Disabled option (requirements not met) 1 1(c) Disabled option (already submitted) 1(d) Summary of { information entered - click to add/amend 2 {

3 { 6. The screen is divided into three main sections:

(a) Section 1 – Summary of Information Required for National Phase Entry – by default, this shows all the participating designated Offices, summarizes the minimum requirements for making a national phase entry request and indicates whether those requirements have been met. The filter option (1(a)), allows the list to be reduced to show only Offices which meet certain criteria, such as “accept national phase entry in German” or “minimum requirements for national phase entry request have been met”, so that it is easier to pick the relevant Offices once the list of participating Offices is significant.

In the request national phase entry version of the action as shown above, checkboxes appear allowing one or more designated Offices to be selected for submitting national phase entry requests. These are disabled for Offices if either the minimum requirements have not been met (1(b)) or if a request has already been sent (1(c)).

The row for each designated Office shows a summary of which required bibliographic data has already been added (1(d)), what still needs to be added, whether a document purporting to be a translation or amendment has been attached, whether any further documents have been attached and whether indications of fee payments have been included. Clicking on any field would, if relevant, open up a box to enter or edit the relevant detailed information. A “preview” option would be provided for designated Offices where at least the minimum requirements had been met.

(b) Section 2 – Bibliographic details overviews – these tables would show in more detail the bibliographic data which had been added and also indicate where the information had come from (either the main IB file or else an indication of which user had last edited it and when).

(c) Section 3 – Attached document overview – this would list all the draft documents which had been uploaded for use with national phase entry requests, such as translations, amendments, powers of attorney, etc. It would be possible to tag any particular document for uploading to several different Offices (normally sharing a common working language).

7. Prior to submission to an Office, the uploaded documents and other information would be private to those users whose accounts had access to the particular international application – they would not be visible to the International Bureau or other Offices using ePCT and similarly not visible to the public on Patentscope. After the request for national phase entry was submitted, it is envisaged that at least the form for the national phase entry request would be made available on ePCT for Offices and Patentscope (and by extension, WIPO-CASE, etc.). The International Bureau would prefer to also make other submitted documents available publicly, but this would be a matter for discussion and would need to be clearly indicated as part of the terms of use of the service, noting that they would not necessarily be immediately publicly available under the national law of the relevant designated Office.

8. It is envisaged that the tables in sections 2 and 3 could also be filtered to avoid confusing from excessively long lists of documents. Further consideration is needed to determine whether this should all be done from a single filter at the top (probably appropriate if the only filter option provided is language) or whether separate filters should be possible for at least the document table (as shown in section 3 of the mockup). USE CASES 9. It is envisaged that this arrangement could be used several ways, depending on the skills and resources of the relevant agent and the difficulty of the language issues or differences in national systems involved:

(a) The international phase applicant/agent could take all actions directly himself, commissioning and entering/uploading any translations which he was not able to perform for himself, merely indicating a national phase agent who would continue to act from that point.

(b) The international phase applicant/agent could engage a national phase agent (for each country in which he whishes to enter the national phase) to commission translations and enter any required information, but retain the sole authority to decide whether and when to submit the national phase entry request.

(c) The international phase applicant/agent could attach some documents (such as powers of attorney) if so desired, but then leave all further actions to a national phase agent (for each country in which he whishes to enter the national phase), who would have the advantage of complete access to the international phase file and much of the bibliographic data being pre-filled.

RESPONSES BY THE INTERNATIONAL BUREAU ON SPECIFIC COMMENTS RECEIVED 10. The main questions from the industry representatives were around what the ePCT interface for national phase entry would look like, how the international phase applicant would be able to share the work effectively with translators, partner agents in the relevant Contracting States and any other relevant parties, how payments would be made and how the results would be visible. In addition, a number of features were mentioned which would be important to the more general issues of inter-office filing and processing and the associated sharing of case management information between agents in different countries.

11. While some Offices may have specific legal problems which might make it difficult to participate immediately, the only issues which appear particularly difficult to solve lie around payment of fees. However, while a centralized payment system would certainly be convenient and make use of the system attractive to a wider audience on a larger proportion of national phase entries, it does not appear essential to implementing a system which will be of benefit to some users and act as a useful testing ground to help guide the development of more ambitious projects.

Response to comments from Sam Helfgott (IPO) 12. The International Bureau agrees that the language issues here are ones which will need to be considered more generally for Global Dossier. Also that it is unlikely that most Offices will accept either forms or descriptions in languages other than their own normal official languages for national phase purposes, beyond the provisions in Article 5 of the Patent Law Treaty (which is not relevant to this system). But the International Bureau believes that it is possible to go ahead without considering the full range of issues because this is a relatively simple case where a single source has a consistent set of bibliographic data in at least one and frequently more languages, which it can deliver to other Offices in both XML and paper-equivalent formats very similar to ones which they are already used to receiving. This should give valuable experience and insight which can be used to assist understanding and implementation of the more difficult general cases later on.

13. The proposal is in fact to set out the information in a standard format, which will include more information than appears in most Offices’ standard national phase entry form, while minimizing the amount of data entry which the applicant needs to perform to produce it. The only difference in content which is envisaged between the national phase entry forms for different Offices is whether translations/transliterations would be required for the names and addresses of all applicants and inventors – given that there seems little need for having the addresses of inventors at all (at least those who are not also applicants) and that in general the original language address will be more useful for mailing purposes than a transliteration anyway, this is an area where limiting the need for translation may be possible and useful.

Response to comments from Hiroshi Takenaka (JIPA) 14. In this section, numbered extracts are included from JIPA’s letter for easy reference, followed by the International Bureau’s response to each item.

(1) Comments related to paragraph 4 of the IB proposal (i) It is highly expected that we would be given an opportunity to review screen images of the ePCT system in its development stages in order for us to provide further comments in terms of user operability.

IB Response: The mockup above seeks to give a sense of what is intended. It is hoped that a final design could be simplified, for example by hiding sections 2 and 3 by default and only showing them when the applicant requests a detailed view. The International Bureau would be pleased to offer further mockups in response to user suggestions or if a fundamentally improved design is found.

(ii) With respect to any bibliographic data which was not already available to the international Bureau and which is common to the participating designated Offices, if any, entering such the common bibliographic data should be also only once.

IB response: Agreed. The idea would be that a user would enter a title once in, for example, Spanish and this would then immediately be reflected in the details for all Offices where Spanish was the official language (or the selected official language in Offices with more than one option). Similarly, each name and address would be entered only once for each character set. Thus, the mockup above shows tables for the information by language (titles) and character set (names and addresses).

(iii) With respect to the way of selection of a participating designated Office, a checkbox or a radio button is better than a pull-down menu in order to avoid the miss-choice with scrolling operation of a mouse.

IB Response: Agreed.

(iv) Even after the batch entry of the national phase, the opportunity for the additional entry is needed. In other words, the ePCT system should allow us to multiple actions to enter different participating designated Offices in different timing until the deadline of the entry of national phase.

IB Response: Agreed. The intention would be that the “action” could be run multiple times, each for different Offices or else as a single action selecting all Offices where national phase entry, at the choice of the applicant. The mockup assumes that the system should not permit multiple requests to be made to the same Office, though the IB would be happy to change that if there were a clear need (would there ever be cases where a request could be refused and need to be resubmitted?).

(v) The entry of multiple participating designated Offices should be able to be carried out on the same screen.

IB Response: Agreed. In the mockup, this would be done by selecting multiple checkboxes before pressing “submit selected request(s)”.

(vi) The ePCT system user may want to make sure that their input data is correct before sending a request of national phase entry. For that purpose, a function of displaying confirmation screen or outputting checklist should be provided to the ePCT system.

IB Response: A option to preview the relevant form for each Office before submission is foreseen.

(vii) Per the selection way of an agent or representative for a participating county, as similar to the way of selection of a participating designated Office, selecting a checkbox or a radio button is better than typing-in information identifying such an agent or representative.

IB Response: Agreed in principle. It is expected that a first version would include a button or checkbox to copy or use the details of the international phase agent without retyping where that is appropriate. An “address book” facility is under development in relation to the ePCT-filing project and this would be integrated into the national phase entry system once it was ready.

(viii) The ePCT system should allow user to be able to input different applicants or inventors in different participated Offices.

IB Response: This is already permitted in the PCT system in general. However, it is assumed that the national phase entry system would simply take the list of applicants and inventors already specified for the relevant designated Office and that if any change were needed this should be done using a Rule 92bis change to amend the primary data. This can already by done within ePCT (example shown below). The main restriction with this is that Rule 92bis changes are only permitted up to 30 months from the priority date. Consideration will be given to proposing a Rule change on this point or permitting an “unofficial” indication to be made later for the purpose of national phase entry. However, neither of these could be done for an implementation this year. For the present, applications where such changes were required after 30 months from the priority date would not be eligible to use the service.

(ix) The ePCT system should provide functions of temporarily saving input data, reopening the operation with the temporarily saved input data, and clearing the input data.

IB Response: Agreed. The proposal is that data entry should be possible totally independent of when the national phase entry is made. (2) Comments related to paragraph 5 of the IB proposal (i) To input county-specific bibliographic information of a participating designated country to the ePCT system, specific input fields for the country- specific bibliographic information should be displayed in a screen or a field associated with such a participating designated county.

IB Response: The intention was that most information should be entered by language and then summarized in the row for the relevant country. It was not envisaged to allow, for example, different titles to be entered for different Spanish-speaking countries. The only way round this under the present proposal would be to enter the first Spanish title, make the national phase entry request in the first Office and then change the Spanish title before making the national phase entry request in the second Office.

However, it is envisaged that uploaded documents in the same language could be permitted on a “per-Office” basis. For example, it would be possible to upload two draft amended descriptions in English and mark one for transmission to DO/US and the second for transmission to DO/GB and DO/IE.

(ii) Such the input fields for the county-specific bibliographic information should be displayed in accordance with the selected participating designated Office.

IB Response: See (i), above.

(iii) English translation should be classified in a common document to be uploaded and transmitted to all participated Offices.

IB Response: See (i), above.

(3) Comments related to paragraph 6 of the IB proposal (i) A function of which respective entry of national phases can be done by respective participated county’s agent or representative should be provided. Further, simultaneous operations by an agent or representative of a participating country, for example, Europe, and an another agent or representative of a different participating county, for example, United States, should be allowed in the ePCT system.

IB Response: Agree that this is desirable. The system will allow multiple users to interact with the system in turn (one user edits details, then another user edits details, then a third user confirms that the request is ready and submits it). The system currently in use in ePCT for dealing with draft documents and data needs to use “locks” to ensure that the database is not corrupted by two applicants editing the same draft at the same time. We will attempt to minimize the effects of this – it may, for example, be possible to provide locks limited to a particular language so that one user could edit Japanese data and a second user simultaneously edit Chinese data.

(4) Comments related to paragraph 8 of the IB proposal (i) Among the participating Offices, “Document Code” for documents to be submitted should be unified. IB Response: Agreed. This is very important, though the codes for document types which can be relevant during the international phase are already defined4. The main difficulty will be agreeing appropriate document descriptions of the type which are visible to applicants, given that Offices with the same working language may use different words to describe effectively the same thing and it will not be practical to refer to particular provisions of national laws.

(ii) The file format of documents should be XML format.

IB Response: Agree that full text formats should be the long term goal. However, it is expected that PDF will be the most common format for the short term, though it should be possible to attach XML format documents for use with those Offices which accept them.

(5) Comments related to paragraph 10 of the IB proposal (i) The PCT EDI folder of the Office should be immediately accessible by an applicant and an agent or representative soon after sending request of the national phase entry.

IB Response: The EDI folder as such is a secure area which may contain records relating to many different international applications and is open only to the International Bureau and the relevant national Office. However, the documents on the International Bureau’s file will be visible immediately through ePCT to all users who have access to the relevant international application and will presumably quickly become available for inspection in any national private file inspection systems. The International Bureau is willing to work with any national Office to allow the embedding of information into a transmission which will allow a particular national phase entry request to be properly associated with an account in a national file inspection system.

(ii) Per the timing of assignment of the date of receipt, it should be the timing of opening the session of the ePCT system. This is because it is concerned that it may take long time to finish the national phase entry for many participating Offices.

IB Response: The question of the relevant timing is important. However, giving the time of opening of the ePCT session would be significantly more favourable than is permitted in any known filing system at present and seems unlikely to be accepted (typically, in fax and electronic filing systems, Offices give a filing date corresponding to the end of the transmission). The International Bureau would propose that the time should be the local time in the relevant Office when the button is pressed to submit the request and place it in the relevant Office’s PCT-EDI folder, at which time it would be available to that Office even though it might in fact only be retrieved at a later time.

(6) Comments related to paragraph 11 of the IB proposal (i) An official filing receipt showing completion of national phase entry and an application number of a participating country should be immediately sent back to the user through the ePCT system.

4 Annex to “minspec”: http://www.wipo.int/export/sites/www/patentscope/en/pct- edi/documents/doc/minimal_specification_for_transmitting_documents_to_the_IB_V3.9.doc IB Response: The International Bureau will work with Offices to provide a filing receipt system. Using the proposed method, this cannot be guaranteed to be immediate since in most Offices’ implementation of PCT-EDI, retrieving documents is a batch process which only occurs at specific times, rather than being instantaneous. The International Bureau is interested in working with Offices to implement near real time document transfer services, but the standards have not been agreed and this could not be implemented this year.

(ii) A transmittal report showing all necessary documents should be transmitted to respective participating designated Offices by the ePCT system. Further, the respective participating designated Offices should be automatically send back official filing receipt indicating that the Offices actually received all necessary documents through the ePCT system.

IB Response: This is clearly at least highly desirable. As a minimum, Offices which cannot transmit back a filing receipt should agree to maintain the original date in the event that they are not able to retrieve some of the listed documents from the PCT-EDI transmission and the International Bureau needs to resend them later.

(iii) Such transmitted documents should be able to be browsed or downloaded immediately after they are transmitted.

IB Response: This will be possible through ePCT from a copy kept by the International Bureau. Browsing the designated Office’s copy through the relevant national Office’s system will be dependent on the implementation in that national Office (not all designated Offices have such services yet).

(iv) All of input data including bibliographic information, document or file name of uploaded document, and status information should be downloadable in a file format which is easy to edit in office application software such as Microsoft Excel, Access, etc. anytime.

IB Response: Download from ePCT of international phase bibliographic details and status information in CSV (Excel-compatible) format is due to be implemented in Q3 2013 – adding in information relating to national phase entry requests should be fairly simple. This can also be extended to file lists, likely also this year.

(v) Such downloading should be able to be done by both a single case and multiple cases.

IB Response: Agreed. Download of bibliographic data for multiple international applications selected from the worklist is expected to be possible from early next year.

(vi) Such downloading condition should be able to be specified by a date or time period on which the national phase entry was done.

IB Response: Agreed. To the extent that (v) is completed, this would simply be a case of adding a new filter option to the “workbench” to allow selection of international applications where “request for national phase entry was made between X and Y” and then using “select all” on the results before requesting the download. The filter options from the ePCT version about to be released are shown below to illustrate the point. (vii) Csv bulk uploading of multiple participating countries or multiple cases should be able to be done.

IB Response: We are not clear how this could work effectively, but would be happy to discuss possibilities. As a related issue which might at least partially address the underlying concern, we intend to offer machine interfaces which could allow a user’s patent management (/docketing) system to upload bibliographic data (such as the name and address of a national phase agent) which could be associated with a particular designated Office for national phase entry. The timing of this would depend on discussion with private sector patent management system suppliers.

(viii) When a csv bulk uploading file including incorrect information is uploaded, an error message should be displayed.

IB Response: Agreed. The system always attempts to check the validity of uploaded files to the best extent possible.

(7) Comments related to paragraph 12 of the IB proposal (i) Payment of national fees should be able to be made through the ePCT system.

(ii) The ePCT system user should be able to pay national fees to the participating Office where the ePCT system user resides, or to the WIPO, and thereafter such the participating Office or the WIPO should remit to the participating designating Offices.

IB Response: Agree in principle, but quite difficult (especially (ii)).

The International Bureau is looking at the general issues here in order to: (i) allow the International Bureau to collect fees on behalf of receiving Offices for international applications filed using ePCT; (ii) to generally improve the efficiency of the systems for resolving the payments of handling fees, international filing fees and search fees so as to ensure prompt transfer of fees due to Offices while minimizing transaction costs and risks relating to fluctuating exchange rates and a pilot is about to begin between IB, US and EP to test some of the principles. If successful and the relevant Offices were willing, the International Bureau would, in principle, be happy to extend such an arrangement to other fees, including national phase entry fees.

However, this is unlikely to be resolved in less than two years even if treated as a relatively high priority by all parties. In the meantime, the International Bureau proposes only to offer options to include (i) a reference to a payment made in advance; or (ii) an authorization to charge the fees to any deposit account which the applicant may hold at the relevant Office.

Response to comments from SIPO 15. We will be pleased to accept suggestions on how the presentation of the proposed forms could be improved to more closely match the requirements of the Implementing Regulations of the Patent Law of China, in addition to the need to complete the translation of all of the field headings into Chinese. Our only comment here is that we hope that we will be able to provide standard forms and XML which are acceptable by all Offices, so that for any particular international application, the national phase entry request forms which were sent to different designated Offices would differ in only the following ways (where relevant):

(a) The language in which the form and the information contained was presented.

(b) The Office to which they were indicated as being addressed.

(c) The form of protection specified (patent, utility model, etc.).

(d) The name and address of the national address for service. (e) The applicants and inventors, to the extent that some might have been indicated in the international phase as being relevant to only certain designated Offices.

(f) Whether a translation/transliteration of some or all of the inventor and applicant names and addresses are included.

(g) The list of attached documents.

16. In particular, we hope that the maximum information which the applicant might need to add to the form, rather than it being generated automatically from information already on file should be:

(a) a title in a language of the Office.

(b) a national name and address for service.

(c) translations and transliterations of some or all of the applicant and inventor names and addresses.

Response to comments from KIPO 17. As noted above, we agree that fees will be difficult. We hope that it will be possible to go ahead without waiting for agreement and implementation of a centralized payment service.

18. We may be able to include a warning for applicants interested in DO/KR that the system can only be used by applicants who have pre-registered their intention to use electronic filing and/or require a code to be entered corresponding to a confirmation that they have so registered. However, we must minimize the need for such special provisions since the system will become too complicated if different special requirements apply to all participating Offices.

19. On timing, see the comment in response to item 5(ii) of JIPA’s comments, above. This is something which is important, but may in fact not be difficult if the designated Office is able to monitor the PCT-EDI folder and guarantee delivery of receipts sufficiently quickly.

20. On language issues, the system is intended to permit delegation of the data entry to experts in the relevant language. We would appreciate comments on whether the proposed approach would seem likely to meet KIPO’s concerns about risk of errors.

Response to comments from JPO 21. The International Bureau agrees that evaluation is required of the different scenarios and hope that the mockup and explanations provided above will assist this.

22. In relation to integration with existing e-filing systems, we note that one alternative to PCT-EDI would be filing with existing electronic filing servers using the “interoperability protocol” used to maintain compatibility between PCT-SAFE, EPO-OLF and JPAS. ePCT already runs services using this protocol for ePCT-filing, which has been used successfully for several hundred demo mode filings over the last 6 months and is about to begin live pilots. This would have certain benefits and drawbacks:

(a) Benefit: It would actively push documents to the designated Office and offer real time receipts in response. (b) Drawbacks: It would require the designated Office’s systems to be available at the moment when the button was pressed in ePCT (which would not be required by the proposed PCT-EDI arrangement), though the risk would be extremely limited since the relevant servers have proven extremely reliable over the past 10 years.

(c) It would require upgrading of the relevant servers to recognize a new type of package at a time when consideration is being given to phasing out the service to replace it with an arrangement better adapted to web filing systems, which are becoming the norm.

(d) The USPTO does not run a server of the relevant type so the system would need to support multiple document transfer mechanisms, which would increase the costs and system complexity.

23. Inclusion of PPH requests in the request for national phase entry would be easy and desirable as long as the requirements could be harmonized between participating designated Offices so that the only difference which ePCT needed to recognize was whether the relevant Office offered PPH or not. In the short term, PPH requests could be uploaded as accompanying documents.