Which ISA to choose? A briefing note for US attorneys

Posted on

When filing an international patent application, one of the choices available is which International Searching Authority (ISA) to select for carrying out a search. Fifteen patent offices are currently able to act as ISAs (see here for a list of ISA and IPEA Agreements). Most of these are, however, not available to US applicants for various reasons, which limits the choice to only four: the European Patent Office (EP), the Korean Intellectual Property Office (KR), the Russian Federal Service for Intellectual Property, Patents and Trademarks (RU) and the United States Patent and Trademark Office (US). This assumes that the application is filed in English with the USPTO acting as the Receiving Office. If one or more of the applicants is not of US nationality, or if the application is to be filed in another language, other options may be available depending on the particular requirements of the other ISAs.

For many US-originating international applications, either the USPTO or the EPO is selected as ISA. The choice of which of these two to select usually depends on the subject matter to be searched and on a view of the perceived quality of searching. The cost of an international search is similar in each case, although the USPTO is cheaper.  As of 1 June 2012, the official fees are $2080 for an international search by the USPTO and $2426 by the EPO. Although PCT Rules 39.1 and 67.1 do not oblige an ISA to carry out searches in particular subject areas, the USPTO does not have in practice any limitations on the subject areas it will carry out a search on, and states that it will search applications in the same way that it would for national applications (according to Annex B of the Agreement between the USPTO and WIPO). The EPO also states that it searches international applications as for European applications, but this will result in searches not being carried out in certain areas. In particular, the EPO states that it will not act as ISA for applications where one or more claims relate to business methods, as defined by various international classification codes beginning with G06Q (according to Annexes B and C of theAgreement between the EPO and WIPO). As a result, selecting the EPO as the ISA for an application having at least one claim that is likely to be considered to be a business method would likely result in no search being carried out.

The USPTO and EPO also tend to take different views on unity of invention, even though both are bound to consider unity according to the PCT rather than local law (Article 17(1) and Rule 13 PCT). Since US law tends to be more forgiving of multiple independent claims, these are less likely to attract an objection of lack of unity than before the EPO, which takes a more strict view. As a result, a partial international search with an invitation to pay additional search fees is more likely to issue from the EPO acting as ISA than from the USPTO, which can make the international procedure considerably more expensive in some cases. This can usually be avoided by re-casting the claims prior to filing so that multiple independent claims are consolidated where possible. If this is not done, or is not possible, and the EPO is chosen as ISA, this can result in a requirement to pay one or more additional search fees. If extra fees are not paid in time, this can restrict amendments later on in the European phase to only the subject matter that has been searched. Rule 164 EPC indicates that a Euro-PCT application will need to be limited to what was searched during the international phase. The only way to proceed in the European regional phase with non-searched subject matter is to file a European divisional application, which may first require filing a European regional phase request for subject matter that is not required.

To obtain the benefit of both US and EP searching, one option would be to file (or continue with) a US national application at the same time as filing a PCT application, with the EPO selected as ISA. Both applications may then continue in parallel. While the US application will be searched and examined according to US law and practice, the PCT application will be searched according to EPO practice. A further benefit is that no further search fee will be required when the application enters the European regional phase. The PCT application could alternatively enter the US national phase later on, which would delay the costs of filing a separate US application. The USPTO would, however, be required to follow the PCT regulations on matters such as unity of invention, which can in some cases be problematic.

In some cases US applicants may choose one of the other two available ISAs, although the reasons for doing so are less clear. One reason could be if the application is in a subject area where prior art is suspected to exist only in the local language, or in a language a local examiner is likely to be more familiar with. Since such prior art is less likely to be picked up by a US or European examiner searching in English, a Russian or Korean examiner may be in a better position to find it. If none is then found, the applicant may be in a more confident position. Another reason is that the search fees for both the RU and KR offices are considerably lower than those charged by the EP and US offices. As of 1 June 2012, the official fees are $1101 for an international search by the Korean Office and $453 for the Russian Office. Both offices indicate that there are no subject areas in which they will not carry out searches, beyond that which applies to local applications. Although factors such as the lower fees, wide-ranging search, and ability to file in English may indicate that RU and KR could be a good choice in general, language difficulties and a lack of experienced examiners can result in poorer quality searching. This may lead to negative search results only being found once an application has progressed through to the national or regional phase, after being searched by a more experienced examiner, and after considerable extra expense of proceeding with national phase requests. This is because a Euro-PCT application, if previously searched by an ISA that was not the EPO, will be subject to a supplementary search. Care should therefore be taken when considering whether to select RU or KR as the ISA, possibly by having additional searches performed in parallel. One possibility would be to have a supplementary search carried out by another international searching authority under Rule 45bis PCT, which may be useful where a search for prior art in a specific country or language would be desirable. The ISAs competent to carry out supplementary searches are: ATEPESFIRUSE and XN.

Another factor to consider is how quickly the applicant wishes a subsequent ex-PCT European application to be prosecuted. If the EPO is chosen as ISA, a subsequent European regional phase application can be prosecuted considerably faster than otherwise, because initial searching and preliminary examination is already carried out (usually by the same EPO examiner) during the international phase. A formal request for acceleration at the EPO may be made, for which no official fee or other requirements are needed, which can speed the process up further. Examination by the EPO earlier than usual is also possible by requesting early processing on entering the regional phase before 31 months from the earliest priority date, and a six month delay can be avoided by specifically waiving the right to file voluntary amendments. If another ISA is chosen, the requirement for the EPO to carry out a supplementary search can delay examination for a year or more. Acceleration can, however, still be requested with no conditions attached. In some cases the applicant may wish to slow down the examination procedure, in which case selecting an ISA that is not the EPO could be desirable. This can defer some costs, as well as a final decision on allowability, which can be beneficial in certain situations.

In summary, the choice of which ISA to select when filing a PCT application is not necessarily straightforward, and can depend on the applicant’s specific requirements as well as the subject matter and form of the application. For further advice on this or any other aspect of patent filing strategies, please contact your usual Barker Brettell attorney.