PA 02/2011: The extent to which PCT‑PPH possibilities may influence the applicant’s choice of ISA/IPEA

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q:  I am going to file an international application, and, being a national and resident of India, my competent receiving Office is the Indian Patent Office.  I therefore have a very wide choice of International Searching Authorities (ISAs)/International Preliminary Examining Authorities (IPEAs), as follows:  the Australian Patent Office, the Austrian Patent Office, the European Patent Office (EPO), the State Intellectual Property Office of the People’s Republic of China (SIPO), the Swedish Patents and Registration Office and the United States Patent and Trademark Office (USPTO).  Since I would like to take advantage of the PCT-Patent Prosecution Highway (PCT‑PPH) programs upon entry into the national phase in order to fast‑track the examination procedure in the national phase, which of these ISAs offer the possibility for fast track examination under the PCT‑PPH?

A:  The following patent Offices (of those available to you as ISA) offer PCT-PPH1, provided you obtain positive results in the written opinion of the ISA (or in the written opinion of the IPEA or the international preliminary report on patentability (IPRP Chapter II) if you file a demand for international preliminary examination) and any other necessary conditions are met:

  Australian Patent Office:  a pilot PCT‑PPH program exists with the USPTO.  Therefore, if you choose the Australian Patent Office to carry out the international search and/or international preliminary examination, you will be able to request the United States Patent and Trademark Office to fast-track the examination procedure in its national phase;

  Austrian Patent Office:  a pilot PCT‑PPH program exists with the National Board of Patents and Registration of Finland and the USPTO.  Therefore, if you choose the Austrian Patent Office to carry out the international search and/or international preliminary examination, you will be able to request the National Board of Patents and Registration of Finland and/or the USPTO to fast-track the examination procedure in their respective national phases;  

  EPO:  a pilot PCT‑PPH program exists with the Japan Patent Office (JPO) and the USPTO.  Therefore, if you choose the EPO to carry out the international search and/or international preliminary examination, you will be able to request the JPO and/or the USPTO to fast-track the examination procedure in their respective national phases; 

  USPTO:  a pilot PCT‑PPH program exists with the Australian Patent Office, the Austrian Patent Office, the EPO, the National Board of Patents and Registration of Finland, the JPO, the Korean Intellectual Property Office, the Federal Service for Intellectual Property, Patents and Trademarks of the Russian Federation (Rospatent) and the Spanish Patent and Trademark Office.  Therefore, if you choose the USPTO to carry out the international search and/or international preliminary examination, you will be able to request all the above-mentioned Offices to fast-track the examination procedure in their respective national phases.

If you choose SIPO or the Swedish Patent and Registration Office to carry out your international search/preliminary examination, you will not be able to make use of any PCT‑PPH programs as none are currently in operation. Note, however, that a number of regular PPH agreements exist which do not include PCT work products.  Therefore, once you have entered the national phase in a country which has such a regular PPH agreement with other countries, you may be able to use the positive work product from the national phase to get accelerated PPH processing in the other countries.  For further information on PPH agreements which do not include PCT work products, see the websites of the Offices concerned, some of which are linked to from: 

http://www.wipo.int/pct/en/filing/pct_pph.html

As you can see, using the USPTO as ISA/IPEA would appear to offer the most possibilities for making use of accelerated national processing via PCT‑PPH programs.  You should bear in mind, however, that there are other factors to consider when choosing an ISA/IPEA, namely:

  the fee charged by the ISA/IPEA for carrying out an international search or preliminary examination (taking into account any possible fee reductions or refunds) – for details about the fees payable at the various ISAs/IPEAs, as well as any applicable reductions or refunds, see the relevant pages of Annexes D and E of the PCT Applicant’s Guide at:

              http://www.wipo.int/pct/en/appguide/index.jsp

  any fee exemptions, reductions or refunds that are available for national phase examination where particular ISAs/IPEAs have carried out the international search and preliminary examination – see the National Chapter Summaries in the PCT Applicant’s Guide;

  the language of filing of the international application – if your international application is filed in a language which is not accepted by your chosen ISA/IPEA, you would have to incur translation costs (noting that if, in your case, the international application is filed in English, the above-mentioned ISAs/IPEAs will all carry out search and preliminary examination in English);

  the subject matter that an ISA/IPEA is prepared to search – ISAs/IPEAs are not required to search or examine any of the subject matter under PCT Rule 39.1 or 67.1.  Information about whether exceptions to these rules exist can be found in the corresponding Agreements with the International Bureau of WIPO in relation to the functioning of the International Searching and International Preliminary Examining Authorities under the PCT at:

               http://www.wipo.int/pct/en/access/isa_ipea_agreements.html

However, for specific details of the subject matter which is excluded, and the extent to which it is excluded, you should check the national or regional law applied by the Authority concerned.

  the length of time it may take for the ISA/IPEA to establish its written opinion or IPRP Chapter II – you might find it helpful to consult the timeliness statistics for the various Authorities which are available on the WIPO website at:

               http://www.wipo.int/ipstats/en/statistics/pct/

Please also be aware that all the PCT‑PPH programs are currently operating in the form of pilot programs (for details of expiration dates, see the respective websites that are linked to from the PCT-PPH pilot page at:  http://www.wipo.int/pct/en/filing/pct_pph.html).  Although it is expected that the pilot programs between the Authorities concerned will be successful, and will therefore be either extended or fully implemented, if you file an international application now, there is no guarantee that such a program will still be operating between any two Offices by the time you enter the national phase.

For further information on the PCT‑PPH pilot programs, see PCT Newsletter Nos. 02/2010, 06/2010, 10/2010, 01/2011, and page 2 of this issue.



1  Situation at time of writing.

 

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