RWS inovia Travels: NAPP’s 20th Annual Meeting

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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 They went on to explain that their systems are outdated, so communication is done by fax and response times are delayed overall.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!

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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The Benefits of the Supplemental Search Report

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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 Benefits of the Supplemental Search Report

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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

pen
 

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.

 

What to Expect in your International Search Report and Written Opinion

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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.

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

No comments yet

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.

Read More