What to Expect in your International Search Report and Written Opinion

The International Search Report and Written Opinion of the International Searching Authority (ISR) is a document provided by the International Searching Authority (ISA) in connection with a PCT patent application. Typically, the ISR is issued a few months after the International Filing Date, but there can be quite a significant difference depending on what ISA you select. The ISR gives applicants an idea of what prior art is out there and what issues and rejections may arise once the application has entered the national/regional stage. Applicants can then formulate their foreign filing strategies accordingly and place the application in the condition for allowance.

There’s quite a bit of information packed into the ISA, and it can be difficult to decipher everything that is being presented. Two sections that the applicant should especially pay attention to are the cited prior art references and the findings by the ISA regarding claim novelty, inventive step and industrial applicability. After conducting a search of the prior art, the ISA will list all relevant documents on the ISR and note which claims specifically the reference applies to. These same references will likely be cited against the application during examination at the national stage. The applicant should review them carefully to see how closely their invention reads upon the prior art and if desired, draft claim amendments under Chapter 19.

The second important section to consider is the reasoned statement and citations under Rule 43bis.1(a)(i). Here, the ISA examines the claims to see if they satisfy the requirements for novelty, inventive step and industrial applicability. Again, the findings give the applicants a good idea as to what rejections, if any, will arise at the national stage and help them prepare their rebuttal. Chapter 19 amendments can be submitted 2 months after the ISR was issued to fix lack of novelty, inventive step or industrial applicability.

So what can you do with a favorable ISR?

If you’re fortunate enough to receive an ISR stating that at least one claim has novelty, inventive step and industrial applicability, you can take advantage of the PCT Patent Prosecution Highway (PCT-PPH). This program allows the applicant to fastrack their patent application at the national stage based on a favorable ISR (or written opinion from an International Preliminary Examining Authority or International Preliminary Examination Report from an International Preliminary Examining Authority). Available PCT-PPH programs are listed here.

If you have questions regarding any topic touched on in this article, please contact me by either email or phone at jeffrey.shieh@inovia.com / (646) 237 – 3863. And as always, if you have any thoughts on this topic, don’t hesitate to leave a comment below.