For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Wednesday, 18 December 2013

Those ePCT receipts: WIPO responds in record time

Kudos to the WIPO. Let no-one say that the World Intellectual Property Organization (WIPO) just sits there watching the world go by, while the rest of us get on with our daily tasks of putting the planet right by filing registered rights, creating unregistered ones, innovating new products and processes, infringing, licensing and securitising our intangible assets. No, sir! It has now been conclusively proved that, the moment WIPO's senior staff read anything of concern to them on this weblog, they rush swiftly into action.  Earlier today, at precisely 1.27 pm, this weblog posted the following piece:
It has been discreetly drawn to this Kat's attention by Thomas Netter (katpat!) that the World Intellectual Property Organization's ePCT receipts only list one of several applicants when there are multiple assignees on a patent application. This may not unreasonably be expected to cause some stress, not to mention palpitations, in the context of research and development collaborations and co-ownership, since the assignees whose names are not listed have no proof that the filing was done properly.  Comments, anyone?
At 4.34 pm the IPKat received the following response from none other than Michael Richardson (Deputy Director of WIPO's PCT Business Development Division):
"The limitation to one applicant on any PCT e-filing receipt is nothing new.  Such limited e-filing receipts have been issued by PCT receiving Offices for nearly 10 years in the context of filings using PCT-SAFE (or epoline or other equivalent filing software). The receipts for ePCT filings are created by exactly the same process in the same servers.  Nevertheless, we would hate to be the cause of readily avoidable palpitations [Bravo, exclaims Merpel] and are happy to look into whether it would be desirable to change the current practice.

The practice was originally set up based on Section 105 of the PCT Administrative Instructions, which sets out the normal arrangement used for indicating applicants on PCT Forms ever since 1978:

“Where any international application indicates two or more applicants, it shall be sufficient, for the purpose of identifying that application, to indicate, in any Form or correspondence relating to such application, the name of the applicant first named in the request. The provisions of the first sentence of this Section do not apply to the demand.”

That limitation to listing a single applicant is a permission, not a requirement.  At least as far as Section 105 is concerned, the filing receipt could be extended to show all the applicants.  But would that have been desirable at the time when its form was fixed?

WIPO staff constantly monitor
the IP blogosphere for signs
of user palpitations ...
The filing receipt is intended merely as a practical proof of the fact that something had happened, not as an explanation of the detail of the international application.  Listing the first applicant is a useful indicator that you’re looking at the correct document.  Listing all of the applicants may take up a lot of space and make the document as a whole more difficult to read.  At a time when almost all international applications had multiple inventor-applicants for the United States (in some cases in enormous numbers) in addition to the corporate applicant(s) for the rest of the world, this would have been a serious concern, quite apart from the automatic reaction of continuing the long-standing default practice with respect to forms.

Of course, things have changed.  With the America Invents Act, it is becoming less necessary to include multiple inventor-applicants who will sign (or may already have signed) over any rights before a US grant occurs.  So we’re happy to review this policy to see whether it can and should be fixed, but it’s not a clear-cut matter that it is desirable to everyone.  And if it is somehow now essential for electronically filed international applications, what about paper applications, which by their nature leave the agent with less evidence of what they have filed?

WIPO staff are trained from an early
age not to deviate lightly from
generally accepted standards
In fact, even if all applicants would welcome a change, it’s not a trivial matter.  The filing receipt is part of a standard which has been agreed internationally and implemented in the servers of more than 20 Offices in addition to the International Bureau (IB).  Technically, we could probably change our own receipts relatively easily, but only by becoming non-compliant with the standard – not only in the visual representation which Mr Netter refers to, but in the underlying machine-readable information which it is generated from.  Deviation from the standard is not something which we would do lightly since it is hard to be certain what might adversely affect processing (and consequently the applicant) further down the line.  The standard could be changed, but it will take time and it’s not really clear whether it is sufficiently desirable that it would be agreed and implemented.

But even in the meantime, things are nowhere near as bleak as Mr Netter implies.

Although the filing receipt does not list the names of all the applicants, it does state the total number, so nobody should be under any illusion that the listed applicant is the only one [oh, says Merpel, I never thought of that ...].

Moreover, in the context of either an ePCT or a PCT-SAFE filing, the filer always has access to a copy of the request as it was transmitted, which lists all of the applicants and can be shown to anyone concerned.  If the partner applicants can’t take your word that this is accurate, then the cooperation between them is probably already in trouble.  Nevertheless, ePCT takes this further and allows the applicant also to download the request form from the IB’s file as soon as it has been received there - within a few minutes in the case of a filing to RO/IB) [RO? Merpel thinks it means "receiving office": any other offers?].  And if you need really solid evidence, you can download a digitally signed copy of the request with certification of its status as soon as the IB has processed it.

We’re also replying directly to Mr Netter, but we always welcome suggestions for improvements to our online services to epct@wipo.int (directly or through the form on our website) or to our PCT services more generally to pctbdd@wipo.int.  If any of your readers wish to confirm that this is an essential feature – or tell us that it’s really not – they may feel free to do so".
Well done, WIPO, says the IPKat, who's quite happy to accept Mr Richardson's comments as a full, reasoned answer that invites, indeed welcomes, further dialogue.

Wouldn't it be nice, says Merpel, if other official bodies and organisations were to take a leaf out of WIPO's book and respond in a friendly, open manner to expressions of concern from serious and responsible users of their systems.  


We hope we won't find our
OHIM friends at this address ...
Take, for example, the Office for Harmonisation in the Internal Market (OHIM).  Back in July of this year, in "Small errors, not many people affected -- or are there hidden consequences?", here, the IPKat raised an issue concerning OHIM practice which appeared to contravene Article 38(7) of the Community Trade Mark Regulation.  Despite subsequent prompts and nudges, both on this blog and via Twitter, the Kat never heard so much as a squeak from his friends in OHIM, never mind a friendly explanation or justification of its office practice.

1 comment:

Anonymous said...

As most students will know (and most qualified attorneys will forget 5 minutes after receiving the marks for their last exams, along with any other information not needed in normal practice), RO/XX is WIPO jargon for "XX acting as the receiving office". In this case, the file can be downloaded from the IB's file in minutes if the IB is receiving office, and whenever the actual RO sends it to the IB if not.

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