[Pct] Different ISA and IPEA?
Carl Oppedahl
carl at oppedahl.com
Mon Jun 9 13:55:28 UTC 2025
Oh and see also these countries where you can automatically get a patent
if EPO granted a patent:
* Slovenia
* Lithuania
* Latvia
* Romania
* Croatia
* Albania
* North Macedonia
* Serbia
* Bosnia and Herzegovina
* Montenegro
On 6/9/2025 7:50 AM, Carl Oppedahl via Pct wrote:
>
> This is well plowed ground. I discuss this in my PCT seminars.
>
> 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:
>
> * MA Morocco
> * MD Republic of Moldova
> * TN Tunisia
> * KH Cambodia
> * GE Georgia
> * LA Lao People's Democratic Republic
>
> 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.
>
> One could also ask for anecdotal reports that suggest that many
> Examiners in many patent offices around the world tend to give /sotto
> voce/ substantial faith and credit to patentability findings by the EPO.
>
> 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.
>
> 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.
>
>
> On 6/9/2025 7:35 AM, Scott Nielson via Pct wrote:
>> 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> on behalf of Timothy
>> Snowden via Pct <pct at oppedahl-lists.com>
>> *Sent:* Monday, June 09, 2025 6:45 AM
>> *To:* pct at oppedahl-lists.com <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/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> <mailto: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>
>> <mailto: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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