Standard Requirements and Handling of Full-text Patent Applications

Resolution of the Executive Committee, Goa, India
15 to 20 March 2024

Standard Requirements and Handling of Full-text Patent Applications

FICPI, the International Federation of Intellectual Property Attorneys, broadly representative of the free profession throughout the world, assembled at its Executive Committee held in Goa, India, 15 to 20 March 2024, passed the following resolution:

RECOGNIZING that jurisdictions and IP Offices worldwide are engaged in efforts to create uniform approaches to requirements and handling of full-text patent applications, and that these discussions are taking place in various fora;

FURTHER RECOGNIZING that WIPO accepts full-text, alternatively referred to as “docx” or “XML”, applications and encourages Applicants to use full-text patent applications with a Receiving Office when available;

NOTING that Applicants have concerns regarding the application integrity with full-text patent applications;

FURTHER NOTING that national IP Offices which already accept full-text patent applications have implemented a variety of systems and rules around their use;

ACKNOWLEDGING that IP Offices have stated various reasons for requiring a full-text application, including improved efficiency and improved application quality;

OBSERVING that Applicants and their representatives have raised concerns that the conversion steps by IP Offices in processing full-text applications may lead to a loss of integrity of the application content;

FURTHER OBSERVING that the responsibility for finding and catching any IP Office-generated-error often lies on the Applicant or their representative before grant of the patent, which puts an undue burden on the Applicant.

URGES IP Offices to

1. develop a full-text filing system in which conversions between file formats is minimised or eliminated to reduce the occurrence of errors, and to permit the filing of a back-up document; 
2. allow applicant/proprietor requested good-faith corrections to IP Office-generated errors in full-text filings to be made at any time without charging a fee, and without affecting the filing date; and
3. discuss full-text filing requirements between offices, involving users in these discussions, to achieve harmonisation in filing requirements.

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