PCT - general practice, newsletters, PCT.App updates

This is a monthly snapshot of the most important PCT-related changes – we include a full list of future changes, together with selected recent changes that are important for daily practice. The changes of 1 Jul 22 will be included in the Sept. 2022 edition of PCT.App.

Some treaty accessions were announced and e-PCT now provides additional recovery options in case of disruption. The biggest future change is still the “big bang” change to the ST.26 standard for sequence listings.

Future Changes and Events

• 6 Jul 22: CV (Cabot Verde) becomes bound by PCT and by Paris Convention
• 1 Jul 22: New standard (ST.26) for Sequence Listings
  • Rules 5, 12, 13ter, 19 and 49 to be amended. 
  • WIPO Standard ST.26 “Recommended Standard for Presentation of […] Sequence Listings using XML” to be implemented
  • Applies to any application with a PCT filing date on or after 1 Jul 22
  • See PCT/A/53, PCT/WG/13/8 and PCT/WG/13/14 (para 4 & 5).
  • See also WIPO Sequence page with more details & software for preparation and validation. There is also FAQ: Implementation of ST.26.
• 1 Jul 22: R. 82quater to be amended
  • Safeguards for applicants and third parties in case of general disruption that affect meeting time limits under PCT Regulations to be strengthened.
  • Applies to any time limit that expires on or after 1 Jul 22
  • See PCT/WG/14/11 and paragraphs 8 to 14 of PCT/WG/14/18
• 1 Jul 22: AI (Administrative Instructions) and Forms updated & available
  • Amended to enable the new WIPO Standard ST.26 to be used for PCT applications on or after 1 Jul 22, and to continue to allow ST.25 files to be used in the processing of earlier filed applications.
    • See right-hand side of legal texts page for updated AI parts 1-8 & Annexes, for Annex F Main & App II-IV and for Annex F App I
    • See PCT Forms in force from 1 Jul 2022 for updated applicant and office forms
• 30 Jun 22: MY (Malaysia) becomes bound by Budapest Treaty for deposit of microorganisms
• 30 Jun 22: IB will cease support for PCT-SAFE
  • IB will end development, distribution and support of the PCT-SAFE software; the final scheduled release will be in April 2022, and no further updates to the software will be provided after that date.
  • UK has announced that it will no longer accept PCT-SAFE. From 1 Jul 22, e-PCT will be available instead.
  • It is expected that the other RO’s that still accept PCT-SAFE (DE, IL, KR, US) will also notify that they will no longer accept such filings. Filing from 1 Jul 22 with PCT-SAFE is done at the applicants own risk.
  • Any existing PCT-SAFE users should change to e-PCT as soon as possible. Currently, 77 RO’s accept filing with e-PCT.
• 29 Jun 22: EPO will give a free online PCT Update webinar (in English) – 2 hours. The speakers will include Pete Pollard.
• 28 Jun 22: EPO will give a free online PCT Update webinar (in Deutsch) – 2 hours
• 28 Jun 22: EPO will give a free online PCT Update webinar (en français) – 3.5 hours
• 1 Jun 22: TR (Turkey) to start operating as depositing office for DAS priority documents
• 23 -24 May 22: WIPO Symposium on Trade Secrets and Innovation (online or in-person in Geneva)
• WIPO: upcoming seminars and webinars are regularly added to PCT Seminar Calendar

Recent Changes

• e-PCT (WIPO Account) has added support for a recovery e-mail address
• e-PCT (WIPO Account) has added ForgeRock (which uses push notifications to your mobile device) to the supported strong authentication methods for accessing confidential data
  • it is recommended to enable at least two strong authentication methods for your WIPO account in case you lose access to one of them
  • in e-PCT, click on your name in the top menu bar and select MY WIPO ACCCOUNT from the pop-up menu for the access settings

Updated Documents

• 6 Jan 22: AG-IP (Introduction to International Phase) updated
  • See the extensive comments in our earlier PCT update – Apr 2022 post
• 1 Jan 22: AI (Administrative Instructions) and Forms updated
  • See the extensive comments in our earlier PCT update – Apr 2022 post

Changes at Specific Offices

• DE: from 1 May 22, national entry time limit increased from 30m to 31m. For applications where old 30m time limit has not yet expired on 30 Apr 22, and applicant has not effectively requested entry before 1 May 22 under A. 23(2) and A. 4(2). See AG: Nat Chap-DE.
• Disruptions of electronic communication at some national offices are listed at WIPO outage page.
• EP: from 1 Apr 22, EPO as RO no longer attaches copy of RO/101 form to RO/105 Notification of Application Number & Filing Date, unless RO has performed an ex officio correction. This allows applicants to immediately detect that a change was made, and reduces paper.
• US: effective 11 Mar 22, USPTO will no longer accept Global PPH requests based on work performed by Rospatent (RU office). See USPTO notice.

Miscellaneous

• WIPO: PCT Success Stories page has been updated. Users are encouraged to also contribute with their stories about how they have been helped by PCT.
• WIPO: report of 14th session of PCT Working Group now available where they discussed possible future changes, such as effects of UN Security Council Sanctions on applications, minimum documentation for (S)ISA’s and IPEA’s, sequence listings, IP5 Collaborative Search and Examination (CS&E), Fee Transfer Service, processing applications in Full-Text Format, recommended changes in light of COVID-19 pandemic, formal integration of PPH into PCT, strengthening PCT safeguards in case of general disruptions, feedback on International Search Report pilot, online services, certified copies of earlier PCT applications, Patent Examiner training and technical assistance to the national offices.
• SLW Institute: very detailed recordings and materials from 15 training webinars held in Feb and March 2022 are still available. They cover PCT procedure, docketing, filing and strategic use. Although from US point of view, they cover a lot of common ground for world-wide users. Highly recommended. Presented by Carl Oppedahl.

Sources: most of these topics are found in PCT Newsletter Apr 2022 (#04). Every month, WIPO publishes a PCT Newsletter with important updates and practical advice. It is possible to subscribe to one or more Newsletters. Latest PCT details for each national / regional office are in PCT Applicants Guide. Latest PCT fee amounts and how to pay them are at PCT Fees and Payments.