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1840 The International Searching Authority [R-2] - 1800 Patent Cooperation Treaty
1840 The International Searching Authority [R-2]
35 U.S.C. 362 International Searching Authority and International Preliminary Examining Authority.
(a) The Patent and Trademark Office may act as an International Searching Authority and International Preliminary Examining Authority with respect to international applications in accordance with the terms and conditions of an agreement which may be concluded with the International Bureau, and may discharge all duties required of such Authorities, including the collection of handling fees and their transmittal to the International Bureau.
(b) The handling fee, preliminary examination fee, and any additional fees due for international preliminary examination shall be paid within such time as may be fixed by the Director.
37 CFR 1.413 The United States International Searching Authority.
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(a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Searching Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Director, in accordance with the agreement between the Patent and Trademark Office and the International Bureau (PCT Art. 16(3)(b)).<
(b) The Patent and Trademark Office, when acting as an International Searching Authority, will be identified by the full title "United States International Searching Authority" or by the abbreviation "ISA/US."
(c) The major functions of the International Searching Authority include:
(1) Approving or establishing the title and abstract;
(2) Considering the matter of unity of invention;
**>(3) Conducting international and international-type searches and preparing international and international-type search reports (PCT Art. 15, 17 and 18, and PCT Rules 25, 33 to 45 and 47), and issuing declarations that no international search report will be established (PCT Article 17(2)(a));
(4) Preparing written opinions of the International Searching Authority in accordance with PCT Rule 43bis (when necessary); and
(5) Transmitting the international search report and the written opinion of the International Searching Authority to the applicant and the International Bureau.<
The United States Patent and Trademark Office >(USPTO)< agreed to and was appointed by the PCT Assembly, to act as an International Searching Authority. As such an Authority, **>the primary functions are to establish (1) international search reports and (2) for international applications having an international filing date on or after January 1, 2004, written opinions. See PCT Article 16 and PCT Rule 43bis<.
Pursuant to an agreement concluded with the International Bureau, the USPTO, as an International Searching Authority, agreed to conduct international searches and prepare international search reports >and written opinions of the International Searching Authority<, for, in addition to the United States of America, Barbados, Brazil, India, Israel, Mexico, New Zealand, the Philippines, Saint Lucia, South Africa, and Trinidad and Tobago. The agreement stipulated the English language and specified that the subject matter to be searched is that which is searched or examined in United States national applications.
TRANSMITTAL OF THE SEARCH COPY TO THE INTERNATIONAL SEARCHING AUTHORITY
The "search copy" is transmitted by the Receiving Office to the International Searching Authority ( PCT Article 12(1)), the details of the transmittal are provided in PCT Rule 23.
THE MAIN PROCEDURAL STEPS IN THE INTERNATIONAL SEARCHING AUTHORITY
The main procedural steps that any international application goes through in the International Searching Authority are (1) the making of the international search ( PCT Article 15), * (2) the preparing of the international search report ( PCT Article 18 and PCT Rule 43) >and (3) for international applications having an international filing date on or after January 1, 2004, the preparing of a written opinion of the International Searching Authority (PCT Rule 43bis)<.
COMPETENT INTERNATIONAL SEARCHING AUTHORITY
In respect of international applications filed with the U.S. Receiving Office, the United States International Searching Authority, which is the Examining Corps of the **>USPTO<, is competent to carry out the international search ( PCT Article 16, PCT Rules 35 and 36, 35 U.S.C. 362 and 37 CFR 1.413).
The European Patent Office **>may also be< competent to carry out the international search (PCT Article 16, PCT Rules 35 and 36) for international applications filed with the U.S. Receiving Office**. See MPEP § 1840.01 >for specific limitations regarding the competency of the EPO as an International Searching Authority for applications filed by U.S. nationals or residents in the USPTO or in the International Bureau (IB) as receiving Office<.
MATTERS TO BE CONSIDERED WHEN CHOOSING AN INTERNATIONAL SEARCHING AUTHORITY
Choosing The European Patent Office (EPO) as an International Searching Authority could be advantageous to United States applicants who designate countries for European Regional patent protection in PCT International applications for the following reasons:
(A) Claims may be amended according to EPO search results before entering the European **>regional phase<.
(B) The EPO search fee need not be paid upon entering the European **>regional phase<.
(C) The EPO search results may be available for use in a >corresponding< U.S. * >nonprovisional< application.
(D) The EPO international search may be obtained without the need for a European professional representative.
(E) The **>EPO< search could provide the U.S. applicant with the benefit of a European art search (which may be different from applicant's own or the USPTO's search) before it is necessary to enter the **>EPO< or other designated Offices.
Some disadvantages of choosing the European Patent Office to conduct the international search are the following:
(A) The EPO **>may not be< competent to perform the international search if the application >was filed by a national or resident of the U.S. and< contains one or more claims relating to the fields of biotechnology or business methods. See MPEP § 1840.01.
(B) The EPO will not search any application to the extent that it considers that the international application relates to subject matter set forth in PCT Rule 39.1. See MPEP § 1840.01 and § *>1843.02<.
(C) Additional mailing time to and from the EPO Searching Authority may shorten the time for applicants to respond to various invitations from the EPO such as for comments on abstracts and payments of additional search fees as well as for PCT Article 19 amendments to the claims after issuance of the international search report >and, for international applications filed on or after January 1, 2004, the written opinion established by the International Searching Authority<.
(D) There may be more difficulty in solving any procedural problems between the applicant and the EPO than with the USPTO due to physical distance and time differences.
The PCT Applicant's Guide provides helpful information for communications with the European Patent Office.
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