Which PCT International Search Authority (ISA) should I use?

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Below is a reexamination of a popular article from 2013, Which PCT International Search Authority (ISA) should I use? Originally published by Jeff Shieh, we update the statistics for 2016 and take a look back at the processes involved in selecting a PCT International Search Authority:

The International Search Report (“ISR”) is a fundamental part of the PCT procedure. Once a PCT application is filed, an International Search Authority (ISA) performs a search of the prior art, and provides the results to the applicant in the form of an ISR. The applicant can use the ISR to gain an insight into what prior art they might encounter during examination after national phase entry.

An ISA is, in effect, a patent office with its PCT hat on. Most ISA searchers and examiners are simply examiners at their local patent office, with special training in the special requirements of the PCT (note: the USPTO outsources some of its PCT International Searches to private search companies).

There are presently 20 ISAs, up from 15 in 2013. Every Receiving Office allows applicants access to at least one ISA. Some countries allow PCT applicants to choose from more than one ISA.

The choice for most applicants worldwide is their local patent office, if it’s available as an ISA. Even when there’s a choice of ISAs, there seems to be a default choice to stick with the local patent office. Many applicants will ultimately want to enter the national phase in their local country, so having the search performed by someone with experience in that country (i.e., a local examiner) may be useful.

However, if you have the option of choosing from more than one ISA, it’s worth taking some time to think about the advantages and disadvantages of the different options.

The US, in particular, offers a wide range of ISAs to applicants for which it acts as receiving office. The available ISAs for US-filed PCT applications are:

  •  IP Australia (Australian Patent Office)
  • European Patent Office (EPO)
  • Korean Intellectual Property Office (KIPO)
  • Rospatent (Russian Patent Office)
  • United States Patent and Trademark Office (USPTO)

So which factors might you want to consider when choosing which ISA will search your PCT application?

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WIPO’s World Intellectual Property Indicators 2015

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WIPO’s World Intellectual Property Indicators 2015 was released last month and provides a report covering various areas of intellectual property including patents, utility models and trademarks.

The data is drawn from national and regional IP offices, WIPO and the World Bank. We’ve included some patent highlights from the report below:

  • The top 5 offices in order: China, United States of America, Japan, Republic of Korea, European Patent Office
  • Top 5 technology fields in order: Computer technology, electrical machinery, measurement, digital communication, medical technology
  • Applications: 2.68 million (4.5% increase from last year)
  • Grants: 1.18 million (0.3% increase from last year)
  • In force: 10.2 million

In total, around 2.68 million patent applications were filed worldwide in 2014, up 4.5% from 2013. While this 4.5% growth in filings in 2014 is lower than the growth rate in each of the previous four years, China has consistently been the driving accelerator, accounting for 89% of growth.

The State Intellectual Property Office of China (SIPO) received the most applications by far, followed by the USPTO, JPO, KIPO and EPO respectively. SIPO, with 928,177 filings, received more applications than the combined total of the USPTO and JPO. If the trend continues, SIPO will become the first office to receive a million applications next year.

In 2014, the top five offices accounted for 82% of the world’s total applications, considerably higher than their 2000 share of 70%. To break it down even further – the top 20 list includes patent offices from thirteen high income economies, five upper middle income economies and two lower middle income countries. Nine offices were located in Asia, six in Europe and two each in North America, Latin America and the Caribbean. South Africa, ranked 23rd, was the highest placed office in Africa.

To download the entire report, click here.

Foreign Filing Roundup

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Good morning, readers. We hope everyone had a great first week of fall 2014. Here are the latest updates in foreign patent filing news:

  • The 54th Series of meetings of the Assemblies of the Member States of WIPO is currently taking place until September 30th.
  • There is no Oktoberfest without patents and innovation! Read on to see how this Munich festival is truly a showcase for patented technology. 
  • The USPTO and KIPO announced a major cooperation treaty this week, designed to improve that patent granting process through streamlined access to patent documentation. 
  • inovia news: WIPO’s PCT September newsletter is out! We’ve recapped the highlights for you here

Have a great weekend and enjoy this spectacular weather! See you back here next week. 

IP5 Offices Agree on Joint PPH Pilot Program

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The five largest Intellectual Property Offices in the world – the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO), recently agreed to launch a pilot program scheduled to kick off in January of 2014.  This program, known as the IP5 Patent Prosecution Highway (PPH), aims to improve the accelerated treatment of patent applications between the five offices and encourages a global framework of work sharing.

According to the heads of these five offices, the primary goal of the PPH is to leverage procedures already in place which accelerate patent examination procedures.  Under the IP5, applicants who have been found patentable by one office may be allowed accelerated processing of their applications before the other countries.  In addition to fast tracking this process, the offices involved will exploit existing work results to the extent practicable. 

According to EPO President Benoît Battistelli, the program will have many benefits.  He states, “I am pleased that the first ever all-inclusive PPH pilot program is launched under the PCT framework. It is a very promising step on the way of facilitating the life of users in five big economic regions which represent 85% of the patents granted in the world.  While the program allows the offices to gain additional experience in utilizing each others available work, it will support the aim of promoting the PCT as the primary global framework for work sharing”. 

As Battistelli notes, the IP5 Patent Prosecution Highway program encourages a global commitment to improving and making patent filing more efficient.  For more information on the IP5 PPH pilot program, please contact Eugen Stohr at the EPO, estohr@epo.org. 

Check out the PPH archive of our blog for news about other recent pilot programs. And as always, learn more about inovia’s services by following us on Twitter @inoviaIP.

Which PCT International Search Authority (ISA) should I use?

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The International Search Report (“ISR”) is a fundamental part of the PCT procedure. Once a PCT application is filed, an International Search Authority (ISA) performs a search of the prior art, and provides the results to the applicant in the form of an ISR. The applicant can use the ISR to gain an insight into what prior art they might encounter during examination after national phase entry.

An ISA is, in effect, a patent office with its PCT hat on. Most ISA searchers and examiners are simply examiners at their local patent office, with special training in the special requirements of the PCT (note: the USPTO outsources some of its PCT International Searches to private search companies).

There are presently 15 ISAs. Every Receiving Office allows applicants access to at least one ISA. Some countries allow PCT applicants to choose from more than one ISA.

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Friday Foreign Filing Roundup

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Hi everyone! Here’s a look at the foreign filing/patent news from the last week of September:

  • Shorter pendency and higher patent quality could result from this new program launched by the USPTO.
  • The EU Patent: What should applicants consider before filing into Europe?
  • The Korean Intellectual Property Office (KIPO) is improving English abstracts to better protect Korean patents.
  • Patent trolls prefer more “mature” IP markets, and China isn’t quite there yet.
  • inovia news: Our agent network continues to grow! Read more >

Don’t forget, we tweet at @inoviaIP. Have a great weekend!

Friday Foreign Filing Roundup

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Hello everybody! Here’s a look at the foreign filing/patent-related news for the week of June 11th:

  • EPO President Benoît Battistelli is calling for a stronger framework of IP rights for inventors, including “a cost-effective and legally safe patent system.”
  • David Kappos of the USPTO recently listed 12 reasons why his office is moving to Cooperative Patent Classification (CPC), a joint initiative shared with the European Patent Office.
  • After more than 5 years of implementation, the Japanese Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) have agreed that July 1st, 2012 will be the official start of the PCT Patent Prosecution Highway pilot program between the two countries. 
  • The U.K. and the U.S. are joining forces to enhance the international patent filing system, beginning with improvements to the UKIPO’s Fast Track System, to create a more flexible and efficient PCT process for patent applicants.
  • And the winners of the EPO’s European Inventors Award 2012 are…Congratulations to all!

inovia has an abundance of resources relating to PCT national phase entry and European validation. Contact one of our offices today for more information!

USPTO Launches Three Patent Prosecution Highway Pilot Programs

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As discussed in previous posts, the Patent Prosecution Highway (PPH) is a work-sharing program designed to improve the efficiency of prosecution among international patent offices and help reduce workload and backlog.  Recently, the USPTO announced the creation of PPH pilot programs with Israel and the Nordic Patent Institute (which covers Denmark, Norway and Iceland), as well as the expansion of the existing program with Korea.

The PPH between the USPTO and the Israel Patent Office is scheduled to commence on July 1, 2011 and expire on June 30, 2012.  Under this PPH, a finding from the USPTO that at least one claim in the application is patentable will allow the applicant to fast-track the corresponding application in the Israel Patent Office, and vice versa.  

Similarly, the PPH between the USPTO and the Nordic Patent Office is also set to begin on July 1, 2011 and remain in effect for 1 year.  Under this pilot, a favorable written opinion or international preliminary report on patentability issued by the Nordic Patent Institute entitles the applicant to accelerated examination in the USPTO. 

The PPH between the USPTO and the Korean IP Office began on June 1, 2010.  In this initial pilot, favorable PCT work product issued by the Korean IP Office permitted the applicant to fast-track the corresponding application in the USPTO.  Under the expanded PPH between US and Korea, set to commence on July 1, 2011, favorable PCT work product performed by the USPTO will allow the applicant to fast-track the corresponding application in Korea. 

With numerous programs and initiatives at the USPTO put on hold (many of them intended to reduce the application backlog), these PPH pilots are welcome steps to help speed up prosecution.

More information on the Patent Prosecution Highway is available here.

The Patent Prosecution Highway

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Dr. Michael Blaine Brooks, of the Law Office of Michael Blaine Brooks, delivered a presentation on “Advancing US Cases via the PCT-Patent Prosecution Highway” to the Ventura County (CA) Bar Association last week.  He was kind enough to share the material with us and we are pleased to have him author an article for the foreign filing blog this week.

Two very helpful things were announced this summer by the USPTO: (1) as of May 25, 2010, the petition fee for the Patent Prosecution Highway (PPH) was waived, and (2) as of June 1, 2010, the PCT Patent Prosecution Highway (PCT-PPH) includes the Korean Intellectual Property Office (KIPO).

This is good news.  Now, an International Search Report (ISR) and written opinion that finds one or more claims of a PCT “international” application patentable can be used to advance a US counterpart non-provisional application in the USPTO’s examination queue.

However, there are a couple of restrictions: 

(a) the claims of the US non-provisional patent application must correspond to, or be narrower than, the claims found patentable in the PCT application.

(b) the PCT International Search Authority (ISA) must be the European Patent Office (EPO), KIPO, or the Japanese Patent Office (JPO).

Presently, KIPO is selected as the ISA in about 30% of PCT applications originating from the US.  In addition, KIPO is the least expensive ISA available to US PCT applicants.  Moreover, it is fully competent to search all classes of US statutory subject matter (in distinction to the EPO, which won’t search in classes such as those relating to business methods and certain types of software).

Unlike the USPTO and EPO (at times), KIPO also provides relatively timely ISRs.  Applicants can expect a search report and written (patentability) opinion either: nine months from the filing of the PCT application without a Paris Convention priority document; or within about sixteen months of the PCT application’s earliest Paris Convention priority date.

If only a subset of the PCT application’s claims are found patentable by the EPO, JPO, or KIPO as the ISA, the US practitioner may consider conforming a previously filed counterpart US application via a preliminary amendment before filing the PCT-PPH request. A PCT Chapter II demand could be filed with amended claims, but the international preliminary examination report for the PCT-PPH request may not be available until 28 months from the PCT application’s Paris Convention priority date.

The US practitioner should be mindful that “102(e)-like” references are not used in determining PCT patentability (although they may be specifically mentioned in the search report), and means-plus-function claims will be read more broadly by PCT examiners than those at the USPTO.  So, while the PCT application extends prospective international patent rights and the PPH provides a process for advancing a corresponding US application, the PCT-PPH advancement process is not a full faith and credit process of US claim allowance. That is, a favorable ruling of patentability for at least one claim of the PCT application does not provide a basis for automatic allowance of the corresponding US case.

Michael Blaine Brooks, PhD, PE(EE), holds his JD from Pepperdine University School of Law and BS, MS & PhD degrees in engineering from UCLA. Dr. Brooks actively participates in furthering excellence in intellectual property practice as Adjunct Professor of Patent Law at Pepperdine, and a member of the Ventura County and the San Fernando Valley Bar Associations. He heads a private intellectual property law firm in the Greater Los Angeles area. (http://www.brooksiplaw.com/)

Click here to read other blog articles on the PPH.