Friday, October 22, 2021

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.

No comments:

Post a Comment