[Pct] Different ISA and IPEA?

[Scott Nielson]

What you wrote broadly matches my experience. I think the difference is that I find a granted US patent is more helpful in most of those countries than a positive IPRP/EP or even a granted EP patent, with the exception of China, which seems more aligned with EP law that therefore more impressed by what happens there.

What this means is that if the client has enough resources to get something that will help them around the world, then instead of going the IPEA/EP route, it's better to just file a US application with a Track One request and leverage the resulting US patent. This is especially true if the client is a small entity so the Track One fee is not that much more than IPEA/EP.

The advantage is that CA, MX, AU, and the like seem to be just as impressed by a US patent. And a US patent comes with the nice advantage of having more independent claims than an EP patent so a PPH request filed in the other countries can include all those claims (in fact one problem with IPRP/EP -> PPH in US is that you are limited to just one type of independent claim). As a recent example, I was able to get two US patents and then file PPH requests in CA, MX, and AU with eight independent claims (those countries don't charge extra for independent vs dependent claims) and have it sail through.

The mental model you use to categorize things is interesting. Mine is more along the lines of IPEA/EP is really only something to do if the applicant wants to expedite examination in EP or CN. Otherwise, push a US patent, which most clients want anyway. Other than CN, most countries clients care about (CA, MX, AU, KR, and JP to the extent JP is influenced at all) are just as influenced by a US patent as they are by a positive IPRP/EP or EP patent. And, a US patent has the benefit of including more independent claims, which serves to increase coverage in those countries compared to a single apparatus claim.


Scott Nielson

801-660-4400

________________________________
From: Timothy Snowden <tdsnowden at outlook.com>
Sent: Monday, June 09, 2025 7:56 AM
To: Scott Nielson <scnielson at outlook.com>; pct at oppedahl-lists.com <pct at oppedahl-lists.com>
Subject: Re: [Pct] Different ISA and IPEA?


CN, CA, & MX especially. CN gives a lot of weight but doesn't implicitly follow. CA almost implicitly follows and just requires some Canada-specific formality adjustments. MX (especially with their new APG program) pretty much says they implicitly follow it. KR & AU tend to be very impressed by it.


JP I have mixed results with. I often find they 'rehash' the prosecution history and try to one-up the EP but don't seem to set in as much as if I don't have a positive IPRP. Usually if I can delay JP examination until I get allowable claims in US, then their rejection will look very much like the US initial OA, and I can make the same amendments as in US and point to the issued US patent. I know that JP's obviousness analysis was originally based off of US obviousness law, and so I feel like JP tends to put more weight in a US obviousness analysis.


US it depends -- I actually get more first-action allowances when I enter PPH from EP than anything else, so my feel is that they respect it, but don't follow it implicitly. My gut feel is that this is due to a) our different obviousness analysis (less technical / more 'gut feel' and arguably a higher hurdle than EP), and b) the pressure on US examiners - different in different art units - to not issue first-action allowances. The cases I get first-action allowance tends to be cases where it's easy to point to the contours of the prior art and the distinctions. The cases I have to go another round in the US is usually where the line is very fine and I feel the examiner is covering their 'quality review' bases (I had one examiner raise a 101 rejection and tell me they agreed with me that it should be withdrawn but just wanted to make sure it had been addressed in the file history). However, I can usually get to allowance in US with one OA when using PPH from positive EP opinion. I find in software cases especially that it tends to shorten the curve significantly because the examiners seem to feel less required to make multiple rejections.


The US IPRP seems to be good quality lately (with my very limited experience with it), and now that actual examiners are doing it seems to be respected by the US, but I shy away from it in most cases just because of the timing -- the one time I've done it in the past few years (because clients were US first and not even sure they were going to file outside of US but just wanted to preserve options), USPTO didn't get it there in time for national stage.


FWIW, I tend to mentally divide the patent world into EP-influenced examination countries and US-influenced examination countries. EP countries includes most of Europe (obviously), Asia, and South America. US countries are US and JP, with CA and MX being more US analysis aligned but very accepting of EP.
If you're going to file in EP, I find it's almost always more cost-effective to do IPEA/EP because you essentially split US (and JP if needed) off and handle them by getting PPH in US, getting to allowance in US, and then leveraging in JP, and the rest you pretty much ride through on the EP IPRP.


This sort of rambled but I hope it helps. Just my experience.


On 6/9/2025 8:35 AM, Scott Nielson 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

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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
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Cc: Timothy Snowden <tdsnowden at outlook.com><mailto: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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