When did the Japan Patent Office become available as an International Searching Authority for U.S. applicants?
The Japan Patent Office (JPO) became available as an International Searching Authority (ISA) for certain U.S. applicants on July 1, 2015. According to the MPEP: 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.…
Read MoreWhat modifications were made to the arrangement with the JPO as an International Searching Authority?
The Manual of Patent Examining Procedure (MPEP) mentions that modifications were made to the arrangement with the Japan Patent Office (JPO) as an International Searching Authority (ISA). Specifically: An announcement modifying the arrangement with the JPO appeared in the Official Gazette at 1454 OG 51 on September 4, 2018. To understand the specific modifications made…
Read MoreHow does the ISA determine if unity of invention exists a priori?
How does the ISA determine if unity of invention exists a priori? The International Searching Authority (ISA) determines unity of invention a priori by examining the claims before considering the prior art. According to MPEP 1850: “Lack of unity of invention may be directly evident ‘a priori,’ that is, before considering the claims in relation…
Read MoreWhat happens if an International Searching Authority (ISA) can’t perform a meaningful search on some claims?
If an International Searching Authority (ISA) determines that a meaningful search cannot be carried out for some claims, it will: Search the remaining claims of the international application Indicate the unsearched claims and reasons in Box No. II of the international search report (Form PCT/ISA/210) As stated in the MPEP: “Where only some of the…
Read MoreHow does the ISA handle inaccessible documents cited in an international application?
When an international application cites a document that is not published or accessible to the International Searching Authority (ISA), and this document is essential for understanding the invention, the ISA follows a specific procedure: The ISA may postpone the search The ISA requests that the applicant provide a copy of the document, if possible within…
Read MoreWhen might the ISA not establish an opinion on novelty, inventive step, and industrial applicability?
The International Searching Authority (ISA) may decide not to establish an opinion on novelty, inventive step, and industrial applicability for certain claims in specific circumstances. According to the MPEP, these circumstances include: The international application relates to subject matter for which the ISA is not required to establish a written opinion The description, claims, or…
Read MoreHow does the IPEA/US handle the written opinion of the International Searching Authority?
The United States International Preliminary Examining Authority (IPEA/US) generally considers the written opinion of the International Searching Authority (ISA) to be the first written opinion of the IPEA. As stated in the MPEP: The United States International Preliminary Examining Authority (IPEA/US) will consider the written opinion of the International Searching Authority to be the first…
Read MoreCan the International Preliminary Examining Authority examine inventions not searched by the International Searching Authority?
No, the International Preliminary Examining Authority (IPEA) cannot examine inventions that were not previously searched by the International Searching Authority (ISA). As stated in MPEP 1875: “No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority (37 CFR 1.488(b)(2)).” This limitation ensures that the preliminary examination is based…
Read MoreWhen did IP Australia become available as an International Searching Authority for U.S. applicants?
IP Australia became available as an International Searching Authority (ISA) for PCT applications filed by U.S. nationals or residents on November 1, 2008. This applies to applications filed in the U.S. Patent and Trademark Office (USPTO) as receiving Office or in the International Bureau (IB) as receiving Office. As stated in the MPEP, Since November…
Read MoreWhat are the main procedural steps for an international application in the International Searching Authority?
According to MPEP 1840, the main procedural steps for any international application in the International Searching Authority are: Making of the international search (PCT Article 15) Preparing of the international search report (PCT Article 18 and PCT Rule 43) For international applications having an international filing date on or after January 1, 2004, preparing a…
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