IP Australia has recently updated its list of countries where it is considered a competent International Search Authority (ISA) and International Preliminary Examination Authority (IPEA) under the Patent Cooperation Treaty (PCT) which now includes Brunei Darussalam, Jordan , Iraq , Mauritius and Oman.
For PCT applicants filing with agreed receiving offices (Ros), it is now possible to utilise Australia as the ISA/IPEA (provided the specification is filed in English).
Equally, for applicants who use Australia as their RO (i.e. many of our Australian clients), they can utilise several other countries as their ISA/IPEA. It is also possible for PCT applicants to file a PCT before the International Bureau (IB) as the RO – which, depending on the applicant’s home jurisdiction, can open up more ISAs/IPEAs than they otherwise would have access to.
These arrangements are implemented by individual agreements between respective patent offices and the World Intellectual Property Organisation (WIPO) under the PCT.
Why might a PCT applicant do this?
A PCT applicant might elect a different ISA/IPEA than their ‘home’ RO due to:
- the perceived or actual quality of the ISA/IPEA;
- the workload of the ISA/IPEA;
- the subject matter of the applicant’s PCT application;
- whether the ISA/IPEA is part of the Patent Prosecution Highway (PPH);
- the country of origin of likely prior art raised; or
- a combination of all of the above.
Notably, some ISA/IPEAs specialise in certain types of technology, where for example, there are a high number of patent filings in that jurisdiction for that particular technology. In the case of semiconductors or innovative consumer electronics, for example, a PCT applicant might elect the Korean Intellectual Property Office or the Japan Patent Office as the ISA/IPEA.
A word of caution: not all ISA/IPEA lists and agreements are up to date. Further, there can be peculiarities and specific requirements in the agreements – so caution needs to be exercised, and it pays to check with the relevant ISA/IPEA directly. As an example, the text of the agreement between the government of Australia and WIPO notes that Australia will receive ISAs from PCTs filed where the United States is the receiving office, but it may not receive the corresponding IPEAs if it has received more than 250 international applications from the United States Patent and Trademark Office during the relevant fiscal quarter.
It must also be noted that the above strategies aren’t widely used and can introduce a layer of complexity and possible unforeseen complications,. Where you have an acceptable ISA/IPEA associated with your RO, the path well-travelled may be the best path to take. However, for some applicants in certain circumstances, an alternative approach, used judiciously, can be advantageous.