USPTO and IP Australia Enter Into Agreement on International Search and Examination Services on Certain International Applications

Press Release

CONTACT: Jennifer Rankin Byrne
Phone: (571) 272-8400 or

Washington, D.C. -The United States Patent and Trademark Office (USPTO) and IP Australia (IPAU) entered into an agreement this week in which IPAU will act as an available International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA) for certain international applications filed with the USPTO under the Patent Cooperation Treaty (PCT). The agreement will allow applicants additional flexibility to choose a given international authority based on the technology disclosed in the international application, speed of services provided and cost of obtaining searches and examinations of international applications. The agreement goes into effect November 1, 2008. Additionally, this action will benefit the ongoing USPTO efforts to reduce the growing backlog of U.S. national patent applications waiting to be examined.

Under the terms of the agreement, an applicant selecting IPAU as the ISA will pay a search fee of $1,514, which is less than the current USPTO fee. An applicant selecting IPAU as the IPEA must have had the international search performed by IPAU and will pay an international preliminary examination fee of AUD 550 and a handling fee of AUD 196 directly to IPAU. Certain international applications that contain one or more claims relating to particular mechanical engineering or analogous fields of technology may be excluded from eligibility by IPAU.

The PCT is an international agreement that simplifies the filing of patent applications in its 139 contracting states. A PCT application has the effect of a national application for a patent in any of the designated PCT states. International applicants receive an International Search Report and an International Preliminary Report on Patentability to help them determine if an application meets basic patentability criteria before committing to the high cost of translating and entering the national stage in one or more PCT countries. The USPTO and IPAU are two of 15 intellectual property offices authorized to conduct international searches and international preliminary examinations in the PCT system.