[Pct] Different ISA and IPEA?
Timothy Snowden
tdsnowden at outlook.com
Mon Jun 9 14:49:36 UTC 2025
That's a good strategy (I'm copying that into my notes for explanation
if it's OK with you), and summarizes a path I recommend to some small
clients depending on timing (I actually just recommended to a client
almost this exact strategy a couple weeks ago and talked them out of
filing Chapter II Demand). I think there are probably 3 things that tend
to veer me away from the strategy you articulated so well and so succinctly:
1) If the client knows they will be filing in EP anyway, I find it more
cost effective to get the claims they want 'pre-allowed' during Chapter
II proceedings - except in very rare cases, I personally find that I
have better success when interacting personally with the EP examiner,
which is only available during Chapter II proceedings. I understand
opinions vary, but having tried both ways, my experience is that I can
push for broader claims and be more laser focused on the core inventive
subject matter at a much lower cost than a game of telephone trying to
articulate that to EP counsel. What I /do/ is have good relationships
with several EP counsel who I can rely on in a consulting role.
2) This brings back the question of limited claims: I prefer Chapter II
EP proceedings vs US-first proceedings /precisely because I get to
present more claims at limited / no extra cost/. I use multiple
dependent and I use > 3 independent and > 20 total claims routinely to
a) experiment with more different inventive step provisions, and b)
maintain explicit support internationally for any type of cross-linking
(via multiple dependent claims). Further, I can often 'pre-load'
examination on multiple different sets that a US examiner may well
restrict apart. Yes, I get an "Observation" that EP application will
have to be limited / rearranged / 2-part / etc., but this doesn't
concern any countries I'm aware of as far as PPH. The only problem I've
had is if the EP examiner notes it as a /defect/ -- in that case, I will
explain the difference to the EP examiner during oral consult (i.e.,
this is not a defect under PCT rules, but I welcome you noting it as an
observation /specific to EP regional phase entry/). Now, I have a PPH
availability for sometimes 60+ claims that I can use /for multiple
applications (including in the US, where I can use PPH on
continuations)/. From a timing perspective, I typically find PPH gets
examined at least as quickly as Track One, and I've got the added
benefit of having hashed out the prior art in the ISR. Now I usually
only have to deal with /new /art the US examiner may find. The
flexibility with number of claims /without paying extra fees/ is
actually one of the number one reasons I prefer prosecution as much as
possible internationally before I jump into US. There have been several
cases recently that I've been able to get PPH on 2-3+ US patent
applications from a single EP IPRP (at least one without having to pay
additional exam or search fees because of the differences in how EP
views the 'unitary concept' vs US restriction practice).
3) Timing: In cases where we are going all out for acceleration to
patent as fast as possible, getting an EP positive IPRP is very
predictable time-wise, and I find with investors can sometimes carry the
added plus of being an 'international' opinion (as opposed to US only),
without having to explain the international impact of a US patent.
I appreciate the note-sharing here. Again, your explanation of the
US-first strategy is so concise and well said that I'm copying it into
my notes.
On 6/9/2025 9:29 AM, Scott Nielson wrote:
> 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
>
>
> ------------------------------------------------------------------------
> *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>
> <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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