What should applicants consider when choosing an International Searching Authority?
When choosing an International Searching Authority (ISA), applicants should carefully consider the subject matter of their invention and the search policies of different ISAs. The MPEP 1843.02 advises:
“The applicant considering the filing of an international application may be well advised not to file one if the subject matter of the application falls into one of the above mentioned areas. If the applicant still does file, the International Searching Authority may declare that it will not establish an international search report. Accordingly, applicant should take into consideration which International Searching Authority (e.g., European Patent Office) is selected to conduct the international search.“
This guidance suggests that applicants should:
- Assess whether their invention falls into categories that some ISAs may not search
- Research the specific policies of potential ISAs regarding subject matter restrictions
- Consider the USPTO as an ISA if comprehensive searching is desired, as it searches all subject matter
- Weigh the potential impact on the application’s processing if an ISA declares it won’t establish a search report
Choosing the right ISA can significantly affect the scope and quality of the international search, potentially impacting the success of the international application.
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