[Pct] Different ISA and IPEA?

[Carl Oppedahl]

On 6/7/2025 9:36 AM, Scott Nielson via Pct wrote:
> 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?

When I teach a 2½-day PCT seminar (I have taught two within the past 
year and another one is coming up) I spend time on this.

See for example these slides 
<https://www.oppedahl.com/cle/2022PCTTrainingSession8.pdf> 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.

Yes you are correct that Annex E for IPEA/PH 
<https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=PH&doc-lang=en#IPEA> 
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.

We learn from Annex E for IPEA/US 
<https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=US&doc-lang=en#IPEA> 
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:

    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.

  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.

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.

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.

it is also recalled that against all odds, the IPEA work for IPEA/US 
/*is carried out by members of the USPTO's Examining Corps.*/  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.

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.

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".

I encourage any reader who has not fallen asleep after this long posting 
to consider signing up for my next 2½-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.

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