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<p>This is well plowed ground. I discuss this in my PCT seminars.</p>
<p>One could ask for a list of patent offices around the world that
automatically grant a patent if EPO granted a patent. These
include the following:</p>
<ul>
<li>MA Morocco</li>
<li>MD Republic of Moldova</li>
<li>TN Tunisia</li>
<li>KH Cambodia</li>
<li>GE Georgia</li>
<li>LA Lao People's Democratic Republic </li>
</ul>
<p>One could ask for a list of patent offices around the world that
tend to give full faith and credit to patentability findings by
the EPO.</p>
<p>One could also ask for anecdotal reports that suggest that many
Examiners in many patent offices around the world tend to give <i>sotto
voce</i> substantial faith and credit to patentability findings
by the EPO.</p>
<p>There are plenty of individual Examiners in JPO and USPTO who
might never come out and say it, but who give plenty of faith and
credit to EPO work. The same is true of the patent offices in
Canada, New Zealand, Australia, and Singapore.</p>
<p>There are two information paths here to analyze. A first path is
the information path of "the EPO granted a patent". It is easy
enough to guess how it might work out that an Examiner in some
non-EPO patent office would give a lot of weight to the grant of
the patent in EPO. A second path is the information path of "the
EPO in its role as ISA or IPEA said it's patentable". Here it is
a bit more subtle as to how it might work out that an Examiner in
some non-EPO patent office would give a lot of weight to such an
ISA or IPEA finding. The answer is "they drink their own
champagne". Everybody knows, and I mean everybody, in every
patent office in the world, that if the EPO in its role as ISA or
IPEA said something is patentable, and if the applicant later
enters the EPO regional phase for that something, then a Notice of
Allowance follows automatically. <br>
</p>
<p><br>
</p>
<div class="moz-cite-prefix">On 6/9/2025 7:35 AM, Scott Nielson via
Pct wrote:<br>
</div>
<blockquote type="cite"
cite="mid:IA3PR11MB9087C77F112ED30833C29DA3B06BA@IA3PR11MB9087.namprd11.prod.outlook.com">
<div class="elementToProof">
Thanks for this. What countries, other than China, seem to be
particularly impressed with a positive report from the EP? JP
and US don't seem to be impressed by a positive report from any
other country (curious if your experience is different).</div>
<div class="elementToProof">
<br>
</div>
<div id="Signature">
<p><span><b>Scott Nielson</b></span></p>
<p><span>801-660-4400</span></p>
</div>
<div>
<br>
</div>
<hr>
<div>
<b>From:</b> Pct <a class="moz-txt-link-rfc2396E" href="mailto:pct-bounces@oppedahl-lists.com"><pct-bounces@oppedahl-lists.com></a> on
behalf of Timothy Snowden via Pct <a class="moz-txt-link-rfc2396E" href="mailto:pct@oppedahl-lists.com"><pct@oppedahl-lists.com></a><br>
<b>Sent:</b> Monday, June 09, 2025 6:45 AM<br>
<b>To:</b> <a class="moz-txt-link-abbreviated" href="mailto:pct@oppedahl-lists.com">pct@oppedahl-lists.com</a> <a class="moz-txt-link-rfc2396E" href="mailto:pct@oppedahl-lists.com"><pct@oppedahl-lists.com></a><br>
<b>Cc:</b> Timothy Snowden <a class="moz-txt-link-rfc2396E" href="mailto:tdsnowden@outlook.com"><tdsnowden@outlook.com></a><br>
<b>Subject:</b> Re: [Pct] Different ISA and IPEA? </div>
<div>
<br>
</div>
<p>As a side note, I note that I frequently recommend clients to
use IPEA/EP even when we are planning to have more than 15
claims. If they raise unity of invention, just pay the
additional examination fees (yes, you might have to pay
additional search fees and additional examination fees, although
it's relatively rare).</p>
<p>The amendment requirements are strict, but once you know how to
work with them (or are using high quality EP counsel), then
they're not actually that bad -- many other countries also are
very strict on their amendments, so I tend to view it as a
positive: if I can make an amendment under EP, then it's
<i>almost</i> certain that anywhere else is going to accept it
too.<br>
Regarding the more than 1 type of claims, I almost always demand
an oral consult if we enter Chapter II proceedings, and I
explain to the EP examiner that I understand that they have to
make an
<i>observation</i> that certain claim practices (multiple
independent claims of same type, etc.) will have to be amended
in EP national stage, but I politely point out that these are
not
<i>international <u>defects</u></i> -- almost all EP examiners
are very understanding of this, and sympathize with the goal of
determining
<i>inventive step</i>, and leveraging the high quality EP work
product without necessarily conforming to EP-specific rules
until EP national stage is entered.</p>
<p><br>
</p>
<p>I enjoy working with KR -- they are very helpful, especially
the US help center. However, I rarely get the opportunity to use
them because most of the countries my clients are focused on a
positive report from EP makes a much bigger impact.</p>
<p><br>
</p>
<p>To sum it up in EP -- the amendments I understand, but I think
that is actually a feature. The numbers / types of claims can
99+% of the time be cabined into a simple observation informing
the applicant of changes required in regional/national stage
because they are EP rules, not PCT rules. (So are the
amendments, but that is a matter of interpreting what is
permissible as an amendment so has a direct impact on a finding
of inventive step).</p>
<p><br>
</p>
<div>On 6/8/2025 8:30 PM, Scott Nielson via Pct wrote:</div>
<blockquote>
<div>
Thanks for the detailed explanation Carl. I reported the bug
in ePCT about the Philippines being an option as the IPEA.
Also, I had forgotten that the IPEA/US uses examiners to
perform the examination. The risk that they won't do anything
before the 30 month deadline is high enough that I cannot
imagine ever choosing IPEA/US. </div>
<div>
<br>
</div>
<div>
I noticed something else that gives me pause. <a
data-auth="NotApplicable"
title="https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=US&doc-lang=en#RO"
class="OWAAutoLink"
id="OWAbf51698c-5952-772d-b452-29aeaffeb9ff"
href="https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=US&doc-lang=en#RO"
moz-do-not-send="true">
Annex C for RO/US</a> says Australia is a competent search
authority for only 250 PCT applications per quarter. There are
no subject matter limitations.</div>
<div>
<br>
</div>
<div>
However, <a data-auth="NotApplicable"
title="https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=IB&doc-lang=en#RO"
class="OWAAutoLink"
id="OWAaf46a614-987c-4c20-5005-5b95357268cc"
href="https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=IB&doc-lang=en#RO"
moz-do-not-send="true">
Annex C for RO/IB</a> says "Where the applicant is a
national or a resident of the United States of America, the
Australian Patent Office may be chosen as the competent
International Searching Authority and/or International
Preliminary Examining Authority for certain international
applications only. For further details concerning which
international applications this is restricted to, refer to
Official Notices (PCT Gazette) dated 23 October 2008, pages
131 et seq."</div>
<div>
<br>
</div>
<div>
The <a data-auth="NotApplicable"
title="https://www.wipo.int/export/sites/www/pct/en/docs/official-notices/officialnotices08.pdf"
class="OWAAutoLink"
id="OWA10781d2f-6e02-3819-e098-6e4f74b96c79"
href="https://www.wipo.int/export/sites/www/pct/en/docs/official-notices/officialnotices08.pdf"
moz-do-not-send="true">
PCT Gazette dated 23 Oct 2008</a> at p. 131 says IP
Australia will not be a competent ISA or IPEA for PCT apps
filed by US applicants "where such applications contain one or
more claims related to mechanical engineering or analogous
fields of technology." It then goes on to list a LOT of
technology IP Australia will not handle.</div>
<div>
<br>
</div>
<div>
Do you know why Annex C for RO/US does not list any subject
matter restrictions for ISA/AU or IPEA/AU but Annex C for
RO/IB does? I wonder if the subject matter restrictions were
removed at some point and Annex C for RO/US was updated but
not for RO/IB.</div>
<div>
<br>
</div>
<div>
Even though Annex C for RO/US lists a number of competent
ISAs, it seems like there are issues with many of them,
particularly AU, IL, JP, and PH (either limited numbers of
searches or limited subject matter). That said, I have used JP
and PH without problems so maybe I got lucky. The safe choices
appear to be EP, KR, SG, and US. SG is almost as expensive as
EP so it's hard to see why anyone would choose it.</div>
<div>
<br>
</div>
<div>
The bottom line is that the choice of ISA for a large entity
is EP for a high quality, expensive search or KR for a cheap
search. For a small entity, the choice is the same except now
the US is also an option for the cheap search because it is
close in price to KR. In rare cases where circumstances
warrant, it might be worth choosing SG or rolling the dice
with AU, IL, JP, or PH.</div>
<div>
<br>
</div>
<div id="x_Signature">
<p><span><b>Scott Nielson</b></span></p>
<p><span>801-660-4400</span></p>
</div>
<div>
<br>
</div>
<hr>
<div>
<b>From:</b> Carl Oppedahl <a
class="x_moz-txt-link-rfc2396E OWAAutoLink"
id="OWA35708020-640f-9ecc-ebb4-ac3d5de62ec6"
href="mailto:carl@oppedahl.com" moz-do-not-send="true">
<carl@oppedahl.com></a><br>
<b>Sent:</b> Sunday, June 08, 2025 4:05 AM<br>
<b>To:</b> For users of the PCT and ePCT. This is not for
laypersons to seek legal advice.
<a class="x_moz-txt-link-rfc2396E OWAAutoLink"
id="OWA42e292ff-1fc8-6829-f46a-180dbd8f8caa"
href="mailto:pct@oppedahl-lists.com" moz-do-not-send="true">
<pct@oppedahl-lists.com></a><br>
<b>Subject:</b> Re: [Pct] Different ISA and IPEA?</div>
<div>
<br>
</div>
<div>On 6/7/2025 9:36 AM, Scott Nielson via Pct wrote:</div>
<blockquote>
<div>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>
<div><br>
</div>
<div>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>
<div><br>
</div>
<div>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=330USD, and PH=300USD.</div>
<div><br>
</div>
<div>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>
<div><br>
</div>
<div>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 data-auth="NotApplicable"
class="x_OWAAutoLink"
id="OWAd5158c8d-29ea-2066-bc0c-a00852a6ff7a"
href="https://www.oppedahl.com/cle/2022PCTTrainingSession8.pdf"
moz-do-not-send="true">
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. </p>
<p>Yes you are correct that <a data-auth="NotApplicable"
class="x_OWAAutoLink"
id="OWA8079130d-e53f-937f-1b4d-d54a8f5c50bd"
href="https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=PH&doc-lang=en#IPEA"
moz-do-not-send="true">
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 data-auth="NotApplicable"
class="x_OWAAutoLink"
id="OWAe9136f9d-67d7-432b-081c-445dddbce066"
href="https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=US&doc-lang=en#IPEA"
moz-do-not-send="true">
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.</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
<b><i>is carried out by members of the USPTO's Examining
Corps.</i></b> 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". </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>
<div><br>
</div>
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