[Pct] Different ISA and IPEA?

[miriam at integralip.com]

In my experience, Canadian Patent Examiners give a lot of deference to a
positive report from the EP.

 

Miriam Paton | Registered Patent Agent | INTEGRAL IP

1370 Don Mills Road, Suite 300, Toronto, Ontario M3B 3N7 Canada

TEL 1.416.630.0071 ext. 2 

https://integralip.com 

 <http://ca.linkedin.com/in/miriampaton>
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From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of Scott Nielson via
Pct
Sent: Monday, June 9, 2025 9:35 AM
To: pct at oppedahl-lists.com
Cc: Scott Nielson <scnielson at outlook.com>
Subject: Re: [Pct] Different ISA and IPEA?

 

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).

 

Scott Nielson

801-660-4400

 

  _____  

From: Pct <pct-bounces at oppedahl-lists.com
<mailto:pct-bounces at oppedahl-lists.com> > on behalf of Timothy Snowden via
Pct <pct at oppedahl-lists.com <mailto:pct at oppedahl-lists.com> >
Sent: Monday, June 09, 2025 6:45 AM
To: pct at oppedahl-lists.com <mailto:pct at oppedahl-lists.com>
<pct at oppedahl-lists.com <mailto:pct at oppedahl-lists.com> >
Cc: Timothy Snowden <tdsnowden at outlook.com>
Subject: Re: [Pct] Different ISA and IPEA? 

 

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/official
notices08.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  <mailto:carl at oppedahl.com> <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.  <mailto:pct at oppedahl-lists.com> <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#IPE
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.

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

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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