PCT Practical Advice - Oct 21 - Selecting an ISA

General principles

• Each RO specifies one or more ISAs and IPEAs as competent on PCT applications filed with it - R.35, AG Annex C
• Where several ISAs/IPEAs are competent, applicant may choose using Box IV of Request form - R.4.14bis
• If applicant files at IB, choice of ISA's and IPEA's is same as if applicant had filed at at a RO competent to handle an application from one of applicants based on residency or nationality - R.35.3

Factors to take into account when selecting an ISA (and IPEA)

1. Different ISA's / IPEA's may be available depending on where application is filed
   - More than one RO may be competent to handle PCT filing based on residences and nationalities of all applicants. But, after filing at a competent RO, ISA choices are fixed by RO - R.35, AG Annex C.
   - Some ISA's may limit number of searches they perform for certain RO's. For example, AU and IL have limited numbers for filings at US = RO - AG Annex C.
   - In addition, some IPEA's will only examine applications searched by specified ISA's, possibly limiting choices if a demand (Chapter II) is to be filed.
   - In addition, SISA's will only perform a Supplementary Search if they have NOT already acted as ISA. Current SISA's are: AT, EP, FI, RU, SE, SG, TR, UA, XN and XV.
   
   
2. Languages accepted by ISA for search
   - Each ISA limits languages that it will accept for search. In some cases, a translation must be filed for search - R. 12.3, AG Annex D
   
   
3. Search fees charged by ISA
   - Each ISA determines fees it charges for search and non-unity. Some ISA's offer reductions for SME's and applicants from low- or middle-income economies - AG Annex D. 
   - Some DO/EO's may also provide fee reductions after national entry if certain ISA's have been used - AG National Chapter.
   
   
4. Quality and timeliness of the ISR and Written Opinion
   - ISR and WO-ISA are used by applicants to decide on whether to pursue application, and where to enter national phase.
   - National entry time limits are fixed and are not extended if ISR and WO-ISA are very late. WIPO collects data and reports on quality and timeliness.
   
   
5. Not all subject matter is searched by all ISA's
   - Each ISA can exclude certain subject matter from search - PCT R. 39(i)-(vi), Annex D.
   - Subject matters searched by ISA are usually same as they search in national procedures.
   
   
6. It may be advantageous if ISA has already searched one or more priority applications
   - In such cases, ISR and WO-ISA may be available quicker and/or a discount is provided.
   - Some ISA's (such as EP, ES, FI and IL) allow applicants to file a PCT-Direct letter to submit informal comments about objections raised in search of priority applications.
   
   
7. ISA's search in their national prior art databases
   - Although PCT requires a minimum standard for ISA's, each ISA will have different full text documents available, and each office will have search examiners who can handle these languages.
   - If critical prior art is expected in certain languages, it may be advantageous to arrange a search in that language (if possible).
   
   
8. Use of ISR and WO as PPH work product
   - Many offices participate in one or more PCT-Patent Prosecution Highway agreements, allowing an ISR and WO-ISA to be used in one or more national phases to accelerate processing after national entry. 

Sources: most of this info is from PCT Newsletter Oct (#10) 2021. Every month, WIPO publishes a PCT Newsletter with important updates and practical advice - subscribe here.

PCT News Summary - Oct 2021

Future PCT Amendments - PCT/A/53:

• 01 Jul 22 => Rules 5, 12, 13ter, 19 and 49 to be amended. WIPO Standard ST.26 “Recommended Standard for Presentation of [...] Sequence Listings using XML” to be implemented for any PCT application with an international filing date on or after 1 Jul 22. See PCT/WG/13/8 and paragraphs 4 and 5 of PCT/WG/13/14.
• See also WIPO Sequence page with more details and software for preparation and validation. See also FAQ: Implementation of ST.26.
• 01 Jul 22 => Rule 82quater to be amended. Safeguards for applicants and third parties in case of general disruption that affect meeting time limits under PCT Regulations to be strengthened. See PCT/WG/14/11 and paragraphs 8 to 14 of PCT/WG/14/18. For any time limit that expires on or after 1 Jul 22. 

WIPO Pay - new payment system:

• 14 Jun 21 => allows one or more payments to be made at once for PCT, eHague, WIPO PROOF and UPOV cases. It is secure and encrypted, and payments are processed quickly and confirmed by e-mail. See also further info on payment methods at WIPO.

WIPO Fee Transfer Service - PCT/WG/12/20:

• 01 Jul 20 => any RO, ISA, SISA or IPEA may participate to facilitate exchange of fees between office via IB. Eventually, this will allow applicants more choices of ISA. For participating offices, see the PCT Official Notices.

New webinar recordings - available in several languages:

• Sep 21 => WIPO Standard ST.26: Introduction (Rus)
• Sep 21 => eHandshakes-Access Rights-eOwnership (Eng)
• Sep 21 => How to best utilize declarations (Chin / Port / Span)
• Sep 21 => Mastering priority claims in PCT applications (Eng)
• Sep 21 => Understanding PCT incorporation by reference (Port)
• Oct 21 => ePCT-Filing in Docx (Eng)

Miscellaneous WIPO:

• PATENTSCOPE now allows Markush structures/definitions to be searched
• WIPO GREEN database, with  solutions-oriented innovations, has been fully rebuilt
• 2021 edition of Global Innovation Index (GII) ranks 132 economies, and is now available. See also the Press Release PR/2021/880 for a summary.
• 09 Nov 21 => WIPO IP Diagnostics will launch by webinar to help small businesses self-assess their IP assets and determine how to protect these assets. 
• Upcoming seminars and webinars are found in PCT Seminar & Webinar Calendars.
• Latest PCT fees are found in PCT Fee Table

Miscellaneous Offices:

• 01 Oct 21 => EP (European Patent Office) has introduced a daily limit of EUR 10000 per user account for credit card payments. See OJEPO 2021, A73.
• EA (Eurasian Patent Office) to operate as ISA and IPEA. See PCT/A/53/1. Starting date is not yet known.

Sources: most of these topics are found in PCT Newsletter Oct (#10) 2021. Every month, WIPO publishes a PCT Newsletter with important updates and practical advice. It is possible to subscribe to one or more Newsletters.