When will RO/101 be updated?

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John M
Posts: 14
Joined: Mon Feb 08, 2010 12:49 pm

When will RO/101 be updated?

Post by John M » Wed Sep 19, 2012 11:52 am

Following the AIA, the PCT Request form PCT/RO/101 has changed radically with effect from 16th September 2012. For Example, employee inventors will no longer need to be made applicants for the USA and there is a new Box VIII(iv) for completion by inventors. My questions are as follows:

(1) when will the patent filing software be updated to take account of 16 September 2012 PCT request form?

(2) In the meantime (and after the software is updated) is it acceptable to include the page VIII(iv) executed by the inventors, scanned and added as SEPARATE attachment to the PCT filing, referring to it in Box IX as "other"? This is because the one page will usually sent to the inventors for execution, not the whole request form. Often inventors are in different country from the attorney (at least in an Industrial setting that is often the case) and they will sign, scan and send the electronic copy back with the original following by post.


D. Van Haken
Posts: 70
Joined: Thu Jan 29, 2009 2:14 pm

Re: When will RO/101 be updated?

Post by D. Van Haken » Wed Sep 19, 2012 1:54 pm

Dear John,

The Wipo newsletter of July-August describes how to deal with this:
http://www.wipo.int/edocs/pctndocs/en/2 ... 012_08.pdf

Important information for applicants filing on or after 16 September 2012
Applicants should be aware that, even though it is currently foreseen that the amendments to the PCT Regulations will enter into effect only as from 1 January 2013, the possibility to stop indicating the inventor as applicant will nevertheless exist for international applications filed on or after 16 September 2012. While it is expected that the request form (PCT/RO/101) will be modified accordingly with effect from 16 September, for technical reasons, updates to the PCT-SAFE software (as well as other PCT e-filing software) will take a little longer, but it is expected that the software will be updated by January 2013 at the latest. Applicants may, however, with effect from 16 September 2012, choose not to take into account the parts of the PCT-SAFE request form which enable an applicant to be indicated as applicant for “all designated States except US” or “the United States of America only”, but rather, indicate that the applicant is applicant “for all designated States” and ignore any warning messages in this regard.
Note that if you do indicate an inventor as applicant for the purposes of the U.S. designation in an international application filed on or after 16 September 2012 (for example, if using an out-of-date request form or when completing the PCT-SAFE request form before the software has been updated), this will not be considered a defect as it is still possible, under PCT Rule 4.5(d), to indicate different applicants for different designated States. Nevertheless, the International Bureau will notify the applicant, if the receiving Office has not already done so, that it is no longer necessary to indicate the inventor(s) as applicant(s) for the purposes of the U.S. designation, and that it is possible to request a change under PCT Rule 92bis to change the status of the inventor and the main applicant (for example, to change the indication of the inventor from “applicant and inventor” to “inventor only”, and to indicate the main applicant as applicant for “all designated States" instead of "for all designated States except the United States of America”).
For further information on the AIA, including other changes that will enter into effect under that new legislation, please see the USPTO website at:
http://www.uspto.gov/aia_implementation/index.jsp



When filing using the EPO Online Filing client, the same applies. Once the PCTSAFE update is available, you can expect the update to the EPO Online filing client to be made within weeks.
regards,

Dirk Van Haken
Product Manager Online Filing
EPO


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