PA 06/2013: Filing a demand with an International Authority which is not the Authority which carried out the international search 

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 have received the international search report for a PCT application and am considering filing a demand for international preliminary examination in respect of that application. Is it possible to choose an International Preliminary Examining Authority which is not the same Authority as that which has acted as International Searching Authority?

A: There is nothing under the PCT that prevents an applicant from choosing an International Preliminary Examining Authority (IPEA) which is not the same International Authority (hereinafter “Authority”) as that which acts as International Searching Authority (ISA). However, whether an applicant can, or should, do this may depend on a number of factors, as will be discussed below. Please note that the examples given below are based on information currently published in the PCT Applicant’s Guide and may be subject to change.

Each PCT receiving Office (except the International Bureau as receiving Office (RO/IB)) specifies one or more IPEAs as competent to carry out international preliminary examination on international applications filed with it, subject to the agreement, where applicable, of the Authority concerned; in many cases, the receiving Office will specify several IPEAs to carry out this role. This means that the applicant’s choice of IPEAs will be determined by the receiving Office with which he/she files the international application (as is also the case for ISAs). In the case of international applications filed with RO/IB, the competent IPEA/IPEAs is/are that/those which would have been competent if the international application had been filed with the national Office of or acting for the Contracting State of which the applicant is a resident or a national (see PCT Rule 35.3(a)).

In some cases, however, the applicant may have no choice as there may be only one IPEA which is competent to carry out international preliminary examination in respect of applications filed with a particular receiving Office. This is the case, for example, for applicants filing with the receiving Office of the European Patent Office (EPO), who may choose only the EPO as IPEA (and ISA).

If the receiving Office has specified one or more Authorities as ISA and IPEA, the applicant will have a choice of Authority, and whether an applicant chooses one Authority as ISA and then decides to file a demand for international preliminary examination with another Authority may depend on the following:

– certain IPEAs can only be chosen if the international search was carried out by the same Authority, or by another specified Authority. For example, if an international application is filed with the Mexican Institute of Industrial Property as receiving Office, the applicant may choose the following Authorities as ISA: the European Patent Office (EPO) (ISA/EP), the Spanish Patent and Trademark Office (ISA/ES), the Swedish Patent and Registration Office (ISA/SE), or the United States Patent and Trademark Office (USPTO) (ISA/US); however, where the international search was carried out by ISA/US, the applicant cannot then select IPEA/EP, which, in this particular situation, would only examine the international application if the search was carried out by ISA/EP, ES or SE. Likewise, in the case of IPEA/US, if an international application is filed with certain receiving Offices (for example the Department of Intellectual Property (DIP) (Thailand)) it will not examine an international application for which it did not carry out the international search. A number of other Authorities have similar restrictions;

– some IPEAs will only carry out international preliminary examination on international applications filed in a particular language. The requirements will generally be the same as those which apply in respect of ISAs. For example, the Japan Patent Office and the Korean Industrial Property Office will act as ISA and IPEA for international applications filed with the Intellectual Property Office (Philippines) as receiving Office, but only if they are filed in English;

– ISAs and IPEAs will generally not search/examine subject matter specified in items (i) to (vi) of PCT Rules 39.1 and 67.1, respectively. However, exceptions to those restrictions may apply if any of that subject matter would normally be searched/examined under the respective national (or regional) patent granting procedure. An applicant may therefore be obliged to file a demand with the same Authority which carried out the international search if the subject matter would not normally be examined by the other competent Authorities;

– the applicant may also wish to look into the cost of international preliminary examination at the different IPEAs, as this varies considerably between Authorities. Furthermore, at any one IPEA the cost can differ, depending on the circumstances of the international application: certain IPEAs offer discounts for certain categories of applicants (for example, the Austrian Patent Office (IPEA/AT), the National Institute of Industrial Property (Brazil) (IPEA/BR) and IPEA/EP) whereas some Authorities charge more where the ISR was not issued by the same Authority (for example, the Australian Patent Office (IPEA/AU), IPEA/RU and IPEA/US). For information on fees and any applicable reductions, please refer to the PCT Applicant’s Guide, Annex E;

– although a number of Offices in the national (or regional) phase will offer exemptions or reductions in the national fees where international preliminary examination has been carried out on an international application, some of these will offer such an exemption or reduction only when the international preliminary examination was carried out by itself or a particular Office. For example, in the case of the State Intellectual Property Office of the People’s Republic of China, no examination fee is payable in the national phase if the international search report and the international preliminary report on patentability (Chapter II of the PCT) (IPRP Chapter II) have been issued by that Office. For some designated Offices, it may even be sufficient, however, for an ISR or written opinion (Chapter I) to have been established by the same Office. For example, in the case of the USPTO, the applicant is exempt from paying the search and examination fees in the national phase if the written opinion was prepared by ISA/US, provided that all claims presented satisfied the provisions of PCT Article 33(1) to (4). In the case of the EPO, various exemptions and reductions apply depending on which Authority acted as ISA or IPEA. For specific information on whether fee exemptions or reductions are accorded in the national phase by a given Office, please refer to the relevant National Chapter Summary in the PCT Applicant’s Guide; and

– if the applicant wishes international preliminary examination to be carried out quickly, it may be useful to look at the timeliness statistics in respect of the competent IPEAs when deciding on where to file the demand.  Those which have been compiled by the IB are available at:

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

However, even though an applicant may be in a position to choose an IPEA which is different from that which has acted as ISA, many applicants will nevertheless choose the same Authority to carry out search and international preliminary examination. By doing this, it is often the same examiner who does both the search and the preliminary examination, the IPEA will have quick access to the file of the application and will be able to more easily make use of the results of the international search. This may result in obtaining an international preliminary report on patentability (Chapter II of the PCT) earlier and perhaps at a discounted price, however, it may not provide you with as much of a “second opinion” and additional prior art, potentially in different languages.

It is recalled that, in order to facilitate the preparation of the demand for international preliminary examination, a new “Action” has been made available in ePCT private services, whereby the applicant can prepare the demand in ePCT (with auto-fill of the necessary bibliographic data) for online transmittal to the competent IPEA via the IB. This new ePCT function will only allow a competent IPEA to be selected, and provides a number of other validations to help prevent the applicant from making errors, such as checking whether the demand is being filed within the applicable time limit, and checking whether the applicant has selected a language accepted by the IPEA for the purposes of international preliminary examination.

To find out which IPEAs have been specified by each receiving Office, see the PCT Applicant’s Guide, Annex C, and for information on any limitations discussed above which may apply at a given IPEA in respect of certain international applications, see Annex E of that publication at:

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

or the respective agreement relating to the functioning of certain Offices as IPEAs at:

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

Note that if you do not wish to take advantage of the opportunity to make amendments under PCT Article 34(2)(b) to the description, claims and/or drawings of your international application, and you are interested only in requesting a second search of your international application, an alternative to filing the demand at a different Office to that which carried out the international search would be to make use of the supplementary international search system. Unlike the requirements for the choice of ISA or IPEA, the choice of an Authority specified for supplementary search (SISA) is not limited to a specific Authority (or Authorities) which has (have) been specified by the receiving Office – you are free to request any of the SISAs to carry out a supplementary search, provided that it is not the Office which carried out the international search. Currently, the Authorities which are prepared to carry out supplementary search are: the Austrian Patent Office, the EPO, the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the National Board of Patents and Registration of Finland, the Nordic Patent Institute and the Swedish Patent and Registration Office, noting that each SISA will only search documentation in particular languages. For further information on supplementary international search, see the “Practical Advice” in PCT Newsletter No. 01/2012. 

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