[Pct] Another reason to file PCT cases in RO/US not RO/IB

[Carl Oppedahl]

On 12/1/2024 2:13 PM, Andrew Berks via Pct wrote:
> I just looked at the slides Carl Oppedahl sent out regarding which 
> Receiving Office to pick (talk given on Nov. 14).
>
> A factor that Carl didn't mention is that cases filed at RO/IB do not 
> appear in Patent Center, so if you want to file a Demand (Art. 34 
> amendments), which are filed with the International Preliminary 
> Examining Authority, it becomes difficult assuming you want to file 
> the Demand at IPEA/US. I had a big problem a few years ago filing a 
> Demand with a case filed at RO/IB where I used ISA/US, so now I 
> generally file at RO/US, since most of my cases use the ISA/US and 
> IPEA/US.
>
> I am fond of filing Demands. My research on this shows there is a good 
> chance that claims found not novel or inventive can be found novel and 
> inventive after filing a Demand with arguments and claim amendments.
>
> This is really a Patent Center issue. Any case where IPEA/US is 
> possible should be accessible in Patent Center, but it appears to me 
> that only PCT cases filed at RO/US are accessible in Patent Center.

When you say "accessible to me in Patent Center" I guess you mean "I 
possess a Confirmation Number that will permit me to e-file a document 
in Patent Center".

What you are getting at, I guess, if that if you were to select RO/US as 
your RO, and if you were to file a PCT application in RO/US, one of the 
things that you get is the confirmation number. Which means you can 
e-file follow-on documents.

And what you are also getting at, I guess, is that if you you were to 
select RO/IB as your RO, and if you were to file a PCT application in 
RO/IB, then this does not give you a USPTO confirmation number for that 
PCT application number.

Keep in mind that if you want a confirmation number for any PCT 
application (for example so that you can file a Demand or some follow-on 
document at ISA/US), all you need to do is pick up the phone and call 
the EBC.  They will give you the confirmation number.

Keep in mind as well that you can simply file your Demand (or your 
follow-on document to the ISA/US) by faxing it to the Central Fax 
Number.  Or you can mail it.  Or you can hand-carry it.

Most ISAs and IPEAs have chosen to set it up with ePCT so that anybody 
anywhere in the world who wants to send a document to them can do it 
through ePCT.  See for example slide 12 in my webinar of June 8, 2023 ( 
https://blog.oppedahl.com/please-sign-up-for-fifteen-webinars-about-epct/ 
).  You can view that recorded webinar now if you wish.  It explains 
that of the eight ISAs that RO/US has certified, the laggards are 
ISA/IL, ISA/JP, and ISA/US.  The trendy, modern, and up-to-date ISAs are 
AU, EP, KR, RU and SG.  It is the same for IPEAs -- the laggards are IL, 
JP, and US.  The trendy, modern and up-to-date ones are AU, EP, KR, RU 
and SG.   Quoting from slide 12:

Yes clearly it would be very applicant-friendly if ISA/US and IPEA/US 
were to carry out the one-time tasks to arrange to receive 
communications from ePCT.

Until the USPTO does the right thing on this, yes, pick up the phone and 
call the EBC and they will give you the confirmation number for any PCT 
application number and you will be able to file follow-on documents.

I suppose the other thing you may be getting at is that you wish to 
inspect the contents of your PCT application file at the USPTO.  And if 
you did not select RO/US for the filing of that PCT application, you 
might not be sure how to do this.   In such a case, see 
https://www.uspto.gov/sites/default/files/documents/assoc_pct_with_cust_number.pdf 
and http://www.uspto.gov/sites/default/files/documents/cust_num_pct.doc 
.  This explains how to associate a PCT application that you filed in an 
RO that is not RO/US with a USPTO customer number.



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