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1840    The International Searching Authority [R-07.2015]

35 U.S.C. 362  International Searching Authority and International Preliminary Examining Authority.

  • (a) The Patent and Trademark Office may act as an International Searching Authority and International Preliminary Examining Authority with respect to international applications in accordance with the terms and conditions of an agreement which may be concluded with the International Bureau, and may discharge all duties required of such Authorities, including the collection of handling fees and their transmittal to the International Bureau.
  • (b) The handling fee, preliminary examination fee, and any additional fees due for international preliminary examination shall be paid within such time as may be fixed by the Director.

37 CFR 1.413 The United States International Searching Authority.

  • (a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Searching Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Director, in accordance with the agreement between the Patent and Trademark Office and the International Bureau (PCT Art. 16(3)(b)).
  • (b) The Patent and Trademark Office, when acting as an International Searching Authority, will be identified by the full title “United States International Searching Authority” or by the abbreviation “ISA/US.”
  • (c) The major functions of the International Searching Authority include:
    • (1) Approving or establishing the title and abstract;
    • (2) Considering the matter of unity of invention;
    • (3) Conducting international and international-type searches and preparing international and international-type search reports (PCT Art. 15, 17 and 18, and PCT Rules 25, 33 to 45 and 47), and issuing declarations that no international search report will be established (PCT Article 17(2)(a));
    • (4) Preparing written opinions of the International Searching Authority in accordance with PCT Rule 43bis (when necessary); and
    • (5) Transmitting the international search report and the written opinion of the International Searching Authority to the applicant and the International Bureau.

The United States Patent and Trademark Office (USPTO) agreed to and was appointed by the PCT Assembly, to act as an International Searching Authority. As such an Authority, the primary functions are to establish (1) international search reports and (2) for international applications having an international filing date on or after January 1, 2004, written opinions. See PCT Article 16 and PCT Rule 43bis.

Pursuant to an agreement concluded with the International Bureau, the USPTO, as an International Searching Authority, agreed to conduct international searches and prepare international search reports and written opinions of the International Searching Authority, for, in addition to the United States of America, Bahrain, Barbados, Brazil, Chile, Dominican Republic, Egypt, Georgia, Guatemala, India, Israel, Mexico, New Zealand, Oman, Panama, Peru, Philippines, Qatar, Saint Lucia, Saint Vincent and the Grenadines, South Africa, Thailand, and Trinidad and Tobago. The agreement stipulated the English language and specified that the subject matter to be searched is that which is searched or examined in United States national applications.

I.TRANSMITTAL OF THE SEARCH COPY TO THE INTERNATIONAL SEARCHING AUTHORITY

The “search copy” is transmitted by the Receiving Office to the International Searching Authority (PCT Article 12(1)), the details of the transmittal are provided in PCT Rule 23.

II.THE MAIN PROCEDURAL STEPS IN THE INTERNATIONAL SEARCHING AUTHORITY

The main procedural steps that any international application goes through in the International Searching Authority are (1) the making of the international search (PCT Article 15), (2) the preparing of the international search report (PCT Article 18 and PCT Rule 43) and (3) for international applications having an international filing date on or after January 1, 2004, the preparing of a written opinion of the International Searching Authority (PCT Rule 43bis).

III.COMPETENT INTERNATIONAL SEARCHING AUTHORITY

In respect of international applications filed with the U.S. Receiving Office, the United States International Searching Authority is competent to carry out the international search (PCT Article 16, PCT Rules 35 and 36, 35 U.S.C. 362 and 37 CFR 1.413). The European Patent Office (EPO), the Korean Intellectual Property Office (KIPO), the Australian Patent Office (IP Australia) (IPAU), the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Israel Patent Office (ILPO), and the Japan Patent Office (JPO) may also be competent to carry out the international search (PCT Article 16, PCT Rules 35 and 36) for international applications filed with the U.S. Receiving Office. The choice of International Searching Authority (ISA), the USPTO, EPO, KIPO, IPAU, Rospatent, ILPO, or JPO, must be made by the applicant on filing the international application. See MPEP §§ 1840.01 - 1840.06 for further information regarding the competency of the EPO, KIPO, IPAU, Rospatent, ILPO, and JPO as an International Searching Authority for applications filed by U.S. nationals or residents in the USPTO or in the International Bureau (IB) as receiving Office.

The international search fee for the selected ISA must be paid to the USPTO as a receiving Office within one month from the time of receipt of the international application. The search fee amounts for the competent International Searching Authorities are found in each weekly edition of the Official Gazette in United States dollars. The search fee will change as costs and exchange rates require. If exchange rates fluctuate significantly, the fee may change frequently. Notice of changes will be published in the Official Gazette shortly before the effective date of any change.

If the selected ISA considers that the international application does not comply with the requirement of unity of invention as set forth in PCT Rule 13, the ISA may invite applicants to timely pay directly to it an additional search fee in the currency accepted by the ISA for each additional invention.

1840.01   The European Patent Office as an International Searching Authority [R-07.2015]

Since October 1, 1982, the European Patent Office (EPO) has been available as an International Searching Authority for PCT applications filed by U.S. nationals or residents in the U.S. Patent and Trademark Office (USPTO) as receiving Office or in the International Bureau (IB) as receiving Office. The EPO, effective January 1, 2015, no longer has any limitations concerning its competency to act as an International Searching Authority. Previously, the EPO would not carry out an international search for any application which contained one or more claims relating to the field of business methods. Under this new practice, in applications containing claims relating to business methods where the subject matter of the application also contains technical features, the EPO will perform a search for those parts of the application which are more than mere business methods. However, the EPO will issue a declaration under PCT Article 17(2)(a) that no ISR will be established whenever an application relates only to a business method as such. Additionally, the EPO will not search any international application to the extent that it considers that the international application relates to subject matter set forth in PCT Rule 39.1. A declaration under PCT Article 17(2)(a) will be issued in these cases as well.

Once the international search report has been established by ISA/EP, the copies of the documents cited in the PCT international search report are also mailed to the applicant.

1840.02   The Korean Intellectual Property Office as an International Searching Authority [R-07.2015]

Since January 1, 2006, the Korean Intellectual Property Office (KIPO) has been available as an International Searching Authority for PCT applications filed by U.S. nationals or residents in the U.S. Patent and Trademark Office (USPTO) as receiving Office or in the International Bureau (IB) as receiving Office. Once the international search report has been established by ISA/KR, the copies of the documents cited in the PCT international search report are made available only to applicant from the KIPO website (www.kipo.go.kr/kpo/user.tdf?a= user. english.html.HtmlApp&c=50300&catmenu=ek05_01_01) within 3 months from the mailing of the international search report. A fee may be required for request of the cited documents after the expiration of the 3 month period.

1840.03   The Australian Patent Office (IP Australia) as an International Searching Authority [R-07.2015]

The Australian Patent Office (IP Australia) may act as the ISA for an international application filed with the United States receiving Office or the International Bureau (IB) as receiving Office where at least one of the applicants is either a national or resident of the United States of America. The announcement appears in the Official Gazette at 1337 OG 265, on December 23, 2008. However, the use of IP Australia is restricted. IP Australia will not act as an ISA if it has received more than 250 international applications from the USPTO during a fiscal quarter, as indicated in the Official Gazette at 1409 OG 302 on December 30, 2014.

For cited documents in the International Search Report, the IPAU, upon request and on payment, intends to furnish the applicants with copies of the documents.

1840.04   The Federal Service for Intellectual Property (Rospatent) (Russian Federation) as an International Searching Authority [R-07.2015]

For PCT applications filed after January 10, 2012 by U.S. nationals or residents in the U.S. Patent and Trademark Office (USPTO) as receiving Office or in the International Bureau (IB) as receiving Office, applicants may select Rospatent as the International Searching Authority (ISA).

For cited documents in the international search report, Rospatent will send copies with the report by postal service or private courier delivery to the correspondence address of record.

1840.05   The Israel Patent Office (ILPO) as an International Searching Authority [R-07.2015]

Since October 1, 2014, the Israel Patent Office (ILPO) has been available as an International Searching Authority for PCT applications filed by U.S. nationals or residents in the U.S. Patent and Trademark Office (USPTO) as receiving Office. However, the use of ILPO is restricted. The ILPO will not act as an ISA for: (1) more than 75 applications per fiscal quarter; and (2) applications with one or more claims directed to the field of business methods as determined through classification in G06Q of the International Patent Classification.

For cited documents in the International Search Report, the ILPO, upon request and on payment, intends to furnish the applicants with copies of the documents.

1840.06   The Japan Patent Office (JPO) as an International Searching Authority [R-07.2015]

Since July 1, 2015, the Japan Patent Office (JPO) has been available as an International Searching Authority (ISA) for PCT applications filed by U.S. nationals or residents in the U.S. Patent and Trademark Office (USPTO) as receiving Office. However, the use of JPO is restricted. The JPO will act as the ISA for international applications filed with the USPTO insofar as the following conditions are met: (1) the international applications are submitted in English; (2) the claims of the international applications are directed to the field of green technology as defined by certain IPC classes (see Official Notices (PCT Gazette) dated 25 June 2015, pages 108 et seq.); (3) the JPO has not received more than 5,000 international applications from the USPTO during the three year period from 1 July 2015 to 30 June 2018, not more than 300 applications per quarter during the first year, and not more than 475 applications per quarter during the second and third years; and (4) the JPO is chosen as a competent authority by the applicants of said applications.

For cited documents in the International Search Report, the JPO, upon request and on payment, intends to furnish the applicants with copies of the documents.

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Last Modified: 11/04/2015 11:01:44