After filing your PCT application, an International Searching Authority (ISA) will perform a search of relevant patent documents and references. Additionally, the ISA will issue a preliminary and non-binding review of the claims, analyzing them to see if they satisfy novelty, inventive step and industrial applicability standards. The International Search Report and Written Opinion are sent out approximately 4 months after the PCT filing date (16 months after
the priority date).
If desired, the applicant can request further international searches from one or more ISAs which have indicated their availability to perform supplemental searches. There are two fees for requesting the supplemental search – a search fee set by the ISA performing the additional search and a CHF 200 search handling fee to the International Bureau. Usually, this request is submitted after the applicant has received the International Search Report, but no later than 19 months after the priority date. The Supplemental International Search Report usually issues 28 months after the priority date, right at the time when the applicant is deciding where the application will enter the national stage.
The benefit of requesting a supplemental international search is pretty obvious. Having additional sets of eyes searching the prior art base means reducing the chances of any unanticipated prior art popping up during examination. Since foreign filings can be quite expensive, having a complete picture of the prior art and one’s likelihood to receive a patent can help an applicant formulate their strategy before entering the national stage.
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.
Effective January 10, 2012, the Russian Federal Service for Intellectual Property (Rospatent) will be available as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for PCT applications filed with the US Patent and Trademark Office (USPTO) as the receiving office.
The offering of Rospatent as ISA or IPEA should provide applicants with a low-cost, but faster option for their PCT applications‘ international authority. The search fee for electing Rospatent as the ISA is $415 US. Electing Rospatent to be the IPEA will require an international preliminary examination fee of $5400 RUB and a handling fee of $219 US. If the applicant chooses not to have Rospatent perform the international search, the examination fee will be $8100 RUB.
It’s great to see another international patent office deemed acceptable to act as ISA or IPEA for PCT applications filed with the USPTO. Obviously, the more options available to the applicant, the better.
What ISA or IPEA do you usually elect for your PCT application? Will you be considering Rospatent now that it is available?