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<div class="moz-cite-prefix">On 6/7/2025 9:36 AM, Scott Nielson via
Pct wrote:<br>
</div>
<blockquote type="cite"
cite="mid:IA3PR11MB90876979F4E215E0CD31864AB069A@IA3PR11MB9087.namprd11.prod.outlook.com">
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When does it make sense to select a patent office as the ISA and
a different patent office as the international preliminary
examination authority (IPEA)? </div>
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<br>
</div>
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I have a client that likes EP as the ISA but not as the IPEA due
to the EP's strict amendment requirements (primarily basis and
intermediate generalization issues). According to ePCT, it is
possible to choose KR, US, or PH (Philippines) as a competent
IPEA instead of EP (there is some uncertainty about whether PH
is competent; ePCT shows it as an option but the US - Annex C of
the PCT Applicant's Guide lists PH as only competent if it was
the ISA).</div>
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<br>
</div>
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<span>The only reason I can think of for doing this is as a
potentially cheap way to get a favorable IPRP and qualify for
the patent prosecution highway (PPH). The cost for each IPEA
is EP=1915EUR, US=880USD (can be reduced with small/micro
entity discount), KR=330</span><span>USD</span><span>, and
PH=300</span><span>USD</span><span>.</span></div>
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<br>
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The general idea would be to file the PCT application with
claims that are more like US claims (3 independent, 20 total)
and select EP as the ISA. Once the International Search Report
is issued, request preliminary examination with KR or US as the
IPEA with the goal of getting a favorable IPRP so national phase
applications: (i) can be expedited pursuant to the PPH and (ii)
not be limited by EP claim requirements (e.g., single
apparatus/method claim; total of 15 claims, etc.).</div>
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<br>
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Any thoughts on any of this?</div>
</blockquote>
<p>When I teach a 2˝-day PCT seminar (I have taught two within the
past year and another one is coming up) I spend time on this.</p>
<p>See for example <a
href="https://www.oppedahl.com/cle/2022PCTTrainingSession8.pdf">these
slides</a> at page 15, slide 29. That slide reminds us that
there are lots of "universal acceptors" -- IPEAs that are happy to
take your client's money for an international preliminary
examination regardless of whom your client selected earlier as an
ISA. <br>
</p>
<p>Yes you are correct that <a
href="https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=PH&doc-lang=en#IPEA">Annex
E for IPEA/PH</a> says that "[t]he Intellectual Property Office
of the Philippines may act as International Preliminary Examining
Authority only if the international search is or has been carried
out by it." And you are correct that ePCT says the opposite.</p>
<p>We learn from <a
href="https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=US&doc-lang=en#IPEA">Annex
E for IPEA/US</a> that IPEA/US is not quite a universal
acceptor. It is a universal acceptor in the special case where
... well here is what it says:</p>
<blockquote>
<p>The USPTO may act as International Preliminary Examining
Authority only if the international search is or has been
performed by that Office, except that the USPTO may act as
International Preliminary Examining Authority for international
applications filed by at least one resident or national of the
United States of America with the USPTO or the International
Bureau of WIPO as receiving Office where the selected ISA is
competent for residents or nationals of the United States of
America.<br>
</p>
</blockquote>
<p> Keep in mind that this condition is evaluated at the time of
entry into Chapter II of the Treaty -- namely at the time of the
filing of the Demand. So for example an applicant that changed
domicile or citizenship between the international filing date and
the demand date might find that it is unable to use IPEA/US as an
IPEA under this complicated provision.</p>
<p>But I digress. So the bundle of questions, as presented,
includes the notion of actively choosing to purchase the services
of an IPEA that is not the same Office as the ISA that had been
previously hired.</p>
<p>It is recalled that the ISA work for ISA/US is not carried out by
members of USPTO's Examining Corps. It is carried out by one of
several private contractors who pitched cheap enough prices to the
USPTO to be awarded contracts for this work. So if you pick
ISA/US you don't get a member of the USPTO Examining Corps.</p>
<p>it is also recalled that against all odds, the IPEA work for
IPEA/US <i><b>is carried out by members of the USPTO's Examining
Corps.</b></i> But it is also recalled that sometimes when
you pick IPEA/US, the IPRP shows up way too late, well past 30
months, so that the client is forced to make the difficult and
expensive decisions about national-phase entry without having yes
received the results from IPEA/US.</p>
<p>No matter how many reasons you consider for picking an IPEA other
than IPEA/EP, the plain fact that is worth more than money is that
if you pick IPEA/EP, and if IPEA/EP happens to agree that some
claims are patentable, then the EPO (at the time of
national/regional-phase entry) will almost surely "drink its own
champagne". Personally I rank this fact as a fact that wins out
over nearly all other facts.</p>
<p>I would hire experienced and trusted EP counsel at this stage to
handle a Demand directed to EPO, who would know how to handle what
you describe as "EP's strict amendment requirements". <br>
</p>
<p>I encourage any reader who has not fallen asleep after this long
posting to consider signing up for my next 2˝-day PCT seminar. If
you don't want to miss it, be sure that (a) you are a member of
the PCT listserv, and (b) you are subscribed to my blog.</p>
<p><br>
</p>
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