Recently, we attended NAPP’s 20th Annual Meeting & Conference in Alexandria, VA on July 28th-30th. One informative session we attended was “Filing for Patent Protection Abroad” from Mavis Gallenson of Ladas & Parry in Los Angeles.
In her session, she discussed which International Search Authorities are available to US applicants. As we have touched on in previous blog posts, there are numerous ISAs available to patent applicants. Gallenson highly recommended the Korean Intellectual Property Office (KIPO), as it is low cost, thorough and quick and the European Patent Office (EPO) if you’re only filing throughout Europe.
Contrastingly, she discussed Rospatent (Russian Patent Office) and how their systems can be capricious at times. An audience member spoke up and shared that the last time they used Russia as an ISA, the search report was received after the 30-month deadline had passed. They went on to explain that their systems are outdated, so communication is done by fax and response times are delayed overall.
Other offices discussed included the Intellectual Property Office of Singapore, which is still relatively new and too early to make a call on regarding performance. The Israel Patent Office was a top recommendation if you’re not planning to file throughout Asia.
In summary, the US, RU, EP and AU are poor options if you’re planning to file in Asia, as these offices don’t do a thorough job of searching for prior art in places like China, Korea and Japan.
Overall, NAPP’s Annual Meeting was a successful venture for the RWS inovia team. We attended some very informative sessions and met with our IP colleagues. We are looking forward to attending next year!
What ISA’s have you used in the past? Do you agree with this assessment? We invite you to share your experiences in the comment section!