What is the function of the International Searching Authority (ISA) in the PCT system?
The International Searching Authority (ISA) plays a critical role in the PCT system by conducting prior art searches and providing a written opinion on the patentability of the claimed invention. According to the MPEP, The basic functions of the International Searching Authority (ISA) are to conduct a prior art search of inventions claimed in international…
Read MoreHow does the International Searching Authority assess unity of invention?
How does the International Searching Authority assess unity of invention? The International Searching Authority (ISA) assesses unity of invention by examining whether the claims in an international application are linked by a common inventive concept. According to MPEP 1850: “Unity of invention has to be considered in the first place only in relation to the…
Read MoreWhich patent offices can act as International Searching Authorities for applications filed with the U.S. Receiving Office?
For international applications filed with the U.S. Receiving Office, several patent offices can act as competent International Searching Authorities. According to MPEP 1840, these include: United States Patent and Trademark Office (USPTO) European Patent Office (EPO) Korean Intellectual Property Office (KIPO) Australian Patent Office (IP Australia) (IPAU) Federal Service for Intellectual Property (Rospatent) (Russian Federation)…
Read MoreWhich International Searching Authorities can perform a Supplementary International Search?
Not all International Searching Authorities (ISAs) can perform a Supplementary International Search (SIS). According to PCT Rule 45bis.9(a): An International Searching Authority shall be competent to carry out supplementary international searches if its preparedness to do so is stated in the applicable agreement under Article 16(3)(b), subject to any limitations and conditions set out in…
Read MoreHow is the international search fee paid and when is it due?
According to MPEP 1840, the international search fee for the selected International Searching Authority (ISA) must be paid to the USPTO as a receiving Office. The fee is due within one month from the time of receipt of the international application. The MPEP states: “The international search fee for the selected ISA must be paid…
Read MoreHas there been any modification to the arrangement with the ILPO as an ISA?
Yes, there has been a modification to the arrangement with the Israel Patent Office (ILPO) as an International Searching Authority (ISA). According to MPEP 1840.05: “An announcement modifying the arrangement with the ILPO appeared in the Official Gazette at 1432 OG 264 on November 22, 2016.” This indicates that changes were made to the original…
Read MoreWhat is the limitation on EPO’s international search for U.S. applications?
The European Patent Office (EPO) has a specific limitation when acting as an International Searching Authority for U.S. applications. According to MPEP 1840.01: “[T]he EPO has limited competence to act as an International Searching Authority for certain international applications filed by nationals or residents of the United States. The EPO is not competent to search…
Read MoreWhat is the role of the European Patent Office as an International Searching Authority?
The European Patent Office (EPO) has been available as an International Searching Authority (ISA) for PCT applications filed by U.S. nationals or residents since October 1, 1982. 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…
Read MoreHow does the EPO determine its competence to search international applications?
The European Patent Office (EPO) determines its competence to search international applications based on specific criteria. According to MPEP 1840.01: “The EPO will act as an International Searching Authority for international applications filed in the U.S. Receiving Office if the EPO is competent to search the international application and the application is filed in English,…
Read MoreWhat is the process for taking into account results of earlier searches in PCT applications?
The process for taking into account results of earlier searches in PCT applications involves the following steps: The applicant must request the International Searching Authority (ISA) to consider earlier search results under PCT Rule 4.12. The applicant must comply with PCT Rule 12bis.1 regarding the submission of earlier search results. The ISA will review the…
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