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

No comments yet

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?

Read More