[Pct] Different ISA and IPEA?

[Timothy Snowden]

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).

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 /almost/ certain that anywhere else is 
going to accept it too.
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 /observation/ 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 /international _defects_/ -- almost all EP examiners 
are very understanding of this, and sympathize with the goal of 
determining /inventive step/, and leveraging the high quality EP work 
product without necessarily conforming to EP-specific rules until EP 
national stage is entered.


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.


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).


On 6/8/2025 8:30 PM, Scott Nielson via Pct wrote:
> 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.
>
> I noticed something else that gives me pause. Annex C for RO/US 
> <https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=US&doc-lang=en#RO> says 
> Australia is a competent search authority for only 250 PCT 
> applications per quarter. There are no subject matter limitations.
>
> However, Annex C for RO/IB 
> <https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=IB&doc-lang=en#RO> 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."
>
> The PCT Gazette dated 23 Oct 2008 
> <https://www.wipo.int/export/sites/www/pct/en/docs/official-notices/officialnotices08.pdf> 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.
>
> 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.
>
> 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.
>
> 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.
>
> *Scott Nielson*
>
> 801-660-4400
>
>
> ------------------------------------------------------------------------
> *From:* Carl Oppedahl <carl at oppedahl.com>
> *Sent:* Sunday, June 08, 2025 4:05 AM
> *To:* For users of the PCT and ePCT. This is not for laypersons to 
> seek legal advice. <pct at oppedahl-lists.com>
> *Subject:* Re: [Pct] Different ISA and IPEA?
>
> 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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