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<p>Oh and see also these countries where you can automatically get a
patent if EPO granted a patent:</p>
<ul>
<li>Slovenia</li>
<li>Lithuania</li>
<li>Latvia</li>
<li>Romania</li>
<li>Croatia</li>
<li>Albania</li>
<li>North Macedonia</li>
<li>Serbia</li>
<li>Bosnia and Herzegovina</li>
<li>Montenegro</li>
</ul>
<div class="moz-cite-prefix">On 6/9/2025 7:50 AM, Carl Oppedahl via
Pct wrote:<br>
</div>
<blockquote type="cite"
cite="mid:01393f94-338d-4a2c-9a9e-3bc3474fd97b@oppedahl.com">
<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"
moz-do-not-send="true"><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" moz-do-not-send="true"><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 moz-txt-link-freetext"
href="mailto:pct@oppedahl-lists.com" moz-do-not-send="true">pct@oppedahl-lists.com</a>
<a class="moz-txt-link-rfc2396E"
href="mailto:pct@oppedahl-lists.com" moz-do-not-send="true"><pct@oppedahl-lists.com></a><br>
<b>Cc:</b> Timothy Snowden <a class="moz-txt-link-rfc2396E"
href="mailto:tdsnowden@outlook.com" moz-do-not-send="true"><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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