[Pct] Different ISA and IPEA?

[Scott Nielson]

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)?

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).

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.

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.).

Any thoughts on any of this?


Scott Nielson

801-660-4400
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