Piloting a different kind of search program

The IP5 Offices’ third Collaborative Search & Examination pilot program, which launched on 1 July 2018, is now well underway. As we’ve previously reported, the pilot program is an exciting initiative that has the potential to provide PCT applicants with more globally focused insight into the patentability of their invention at a very early stage of the patenting process. The IP5 examiners work 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.

Each Office will accept 100 applications into the pilot, spread over the course of two years. The response to the program at the European Patent Office (EPO) has been particularly strong and over 40 PCT applications filed in English were accepted in the first two months of the pilot. As the quota for English filed applications has now been filled, the EPO are now only accepting additional PCT applications filed in French or German until at least 1 July 2019.

Given the advantages of the program and the fact there are no additional fees for the service, is it not surprising to see that almost half the required applications have been accepted in the first seven months of the pilot.

Australian PCT applicants can participate in the two year pilot by electing the Korean Intellectual Property Office (KIPO) as International Searching Authority (ISA). The initiative provides Australian applicants the possibility of simultaneously obtaining US, EPO, Japanese Patent Office and the Chinese Patent Office examiners’ contributions to the preliminary consideration of the patentability of an invention at a very early stage, all for the reduced cost associated with using the KIPO as ISA instead of IP Australia.

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.