je_admin

Choosing the International Search Authority (ISA)

For a PCT application, the patent office that performs the search on the invention is called the International Search Authority (ISA). Not all patent offices are qualified as an ISA, so a PCT application filed in one patent office may have to be deferred to another patent office to act as the ISA. Even when a patent office is an authorized ISA, the applicant may elect another office as the ISA for its application. There are certain considerations to keep in mind when choosing the ISA. Below is a comparison of three of the ISAs to help you understand what factors to consider when selecting the ISA for your application.

U.S. as Search Authority

The search fee for the U.S. under a PCT is one of the more expensive (currently $2080). Despite the higher price, there are benefits to the U.S. as a Search Authority: a positive search report in Chapter II will result in no fee for search and examination in the U.S. national phase and your case will be advanced out of turn (expedited) for its first office action. The U.S. is competent in the most subject matter as well, especially software, business methods and medical/therapy methods.

A U.S. search report in the PCT process can be used in patent prosecution for foreign filings in some countries. These include:

  • Austria (AT)
  • Australia (AU)
  • China (CN)
  • Denmark (DK)
  • European Patent Office (EP)
  • Finland (FI)
  • Israel (IL)
  • Japan (JP)
  • Korea (KR)
  • United States (US)
  • Russia (RU)
  • Spain (ES)
  • Sweden (SE)

The search report of other Search Authorities can only be used in two or three patent offices. Thus, the U.S. can be a better choice for those who want to be benefit from the lower cost (not having to pay for additional searches) and a faster process (Patent Prosecution Highway or PPH). The USPTO allowance rate of a PPH application is 98%! These are excellent odds considering the investment for each foreign filing.

 

Russia as a Search Authority

Russia, the newest Search Authority for U.S. applicants, has the least expensive search fee. A 50% price reduction in August 2012 makes the cost about $211 for the PCT search fee (more than $1,800 less than the U.S.). The quality of these searches is unknown since there is little history for patent practitioners to evaluate. More information should be available in the coming months, which will allow us to assess the impact of the Russian Patent Office as a competent ISA.

KIPO as a Search Authority

KIPO is often used as a Search Authority because its search has a reputation of fairly good quality and the costs are lower than most other Search Authorities (particularly the U.S., EPO and JPO). The speed of receiving results is also excellent. In the U.S., the search report can be received as long as 45 months after the priority date, as compared to 6-12 months from KIPO. When national filing must be done by 30 months, the practical benefit of the late PCT search has evaporated. However, the KIPO search cannot be used in most jurisdictions for PPH filings. Thus, the cost advantage is largely lost since the PPH cost saving is likely to well exceed the reduced ISA search fees.

As you can see, factors like cost, timeliness, quality and acceptance of results in foreign filings are all important considerations when selecting the ISA for your application. No one ISA is the “perfect choice.” These and other factors will have to be weighed to evaluate how they fit into your goals, needs, and timelines.