Enhanced PCT Search Report/Written Opinion – An offer from the five major Patent Offices that’s too good to miss?

For the past couple of years, the IP5 Offices (Europe, Japan, Korea, P.R. China and US) prepared for the launch of a third Collaborative Search & Examination (CS&E) pilot program on 1 July 2018. The pilot program involves IP5 examiners working together to produce enhanced single international search reports and written opinions (ISR/WO) under the Patent Cooperation Treaty (PCT) for the same fee as a regular ISR/WO. The IP5 CS&E pilot is an exciting initiative that has the potential to provide PCT applicants with a more globally focused insight into the patentability of their invention at a very early stage of the patenting process.

Australian PCT applicants will be able to participate in the two year pilot by electing the Korean Intellectual Property Office (KIPO) as International Searching Authority (ISA). In principle, the initiative provides Australian applicants the possibility of simultaneously obtaining more than one foreign examiner’s contribution to the preliminary consideration of the patentability of an invention. The pilot potentially allows Australian PCT applicants to gain an EPO examiner’s input on a PCT application filed at IP Australia as Receiving Office for the reduced cost associated with using the KIPO as ISA instead of IP Australia.

The IP5 Offices are the five largest intellectual property offices who are working collaboratively with the World Intellectual Property Organization (WIPO) to improve the functionality of the PCT system. Collectively, the IP5 are responsible for about 80 per cent of the world’s patent applications, and 95 per cent of all work carried out under the Patent Cooperation Treaty (PCT). The aim of IP5 as an organisation is to ensure:

  • better quality
  • cost-effectiveness
  • improved efficiency in the patent granting process
  • utilising the PCT framework as a work-sharing opportunity to address growing patent application backlogs worldwide, access to patent information and to address the growing backlogs in applications worldwide by procedural harmonization initiatives including Classification, Global Patent Prosecution Highway, Global Dossier, and of course the CS&E initiative.

The European, Korean and US patent offices have previously completed two CS&E pilot programs ending in 2012, whereby examiners from these different offices utilising different languages worked collaboratively to draw up a single high quality ISR/WOs which includes input of examiners from all of these patent offices. The aim of the third pilot is to further develop and test the CS&E concept amongst the IP5 Offices and to assess user interest in future CS&E product offerings and the resultant expected patent prosecution efficiency gains.

In practice, the IP5 main examiner from the competent ISA will conduct the search and examination in the normal way, but will draw up a provisional ISR/WO which will then be considered and contributed to by peer examiners from the other participating IP5 offices. Additional searching will be carried out if considered necessary. The final ISR/WO will be established by the main examiner after consideration of the contributions from the peer examiners. It is expected that the ISR/WOs will be established within the usual time limits (later of three months from receipt of search copy or nine months from priority date), however, no guarantee on this point can be made at this stage due to the collaborative nature of the project. Usefully, the peer examiner contributions will be made available as separate documents in the “PatentScope” WIPO database.

In contrast to the earlier pilots where the Offices selected participating applications, the PCT applicant will be able to select which applications are to be processed under the initiative by submitting a request for participation when filing the PCT application with the receiving office of one of the IP5 offices or with the International Bureau of WIPO.

Notably, a PCT applicant will be restricted to inclusion of a limited number of PCT applications in the pilot. Indeed, no more than ten applications by the same applicant before the same ISA will accepted in the pilot. Each main ISA intends to accept 100 PCT applications over the pilot’s two year period while about 400 applications are to be considered by each peer ISA. Further, to ensure involvement of a variety of technical fields in the pilot, each main ISA will set a limit on the number of applications in various technological areas so there is no guarantee of acceptance into the pilot.

While the initial phase of the pilot only accepts English language PCT application, it is expected that inclusion of other language applications will follow.

Advantageously, no additional fees for the international search are required during the pilot phase, however, applicants who have participated in the pilot will be asked later to provide an indication of their interest in an ongoing CS&E product under the PCT. If the pilot results in the introduction of a new PCT CS&E product, it is expected that there will be a special CS&E fee capped at no more than the aggregate amount of the search fees of the ISAs together with an administrative fee for running the program.

In the case of applications covering multiple inventions, the peer examiners will only search what is determined to be the first invention in the claims regardless of whether the provisional ISA/WOs are directed to one or more inventions.

Mary Munroe, Principal

Dr Mary Munroe, Former POF Attorney

BSc(Hons), PhD, GDipIP

Mary is an Irish, UK and European qualified patent attorney with over a decade’s experience in IP. She is also a qualified Irish and Community trademark and design attorney (EU), and an Australian and New Zealand patent attorney.