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India begins sharing search strategies in International search report
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International Searching Authorities (ISA) are appointed by the World Intellectual Property Organization (WIPO) for conducting prior art searches on Patent Cooperation Treaty (PCT) applications. There are currently 22 patent offices, including the Intellectual Property Office (IPO) of India, which are recognized as ISA. Applicants can choose from a list of ISA, typically based on their nationality. As an example, currently applicants from India and Iran can select IPO as the ISA.
ISA have the core objective of establishing International Search Report (ISR) on PCT applications. An ISR typically identifies one or more prior art references, categorizes the references based on their relevance, and may include a written opinion. However, among the 22 ISA, 6 ISA also used to include search strategies, which were used to conduct prior art searches while establishing the ISR. The IPO has now become the seventh ISA, which will be making public search strategies while establishing ISR.
In our view, sharing of search strategies is a wonderful initiative at least on three counts. Firstly, in the absence of search strategy, patent applicants had to blindly trust the ISR, and assume that the references cited in the ISR are likely to be the most relevant references. In the event of a poor quality ISR, an applicant may end up making investments into filing national phase applications, which may not get granted. Now that search strategies are being shared, applicants or their consultants may be in a better position to gauge the quality of ISR and take informed decisions.
Secondly, patent offices that subsequently receive national phase applications can examine the search strategies and calibrate their efforts. Additionally, examiners at national offices can build over the search strategies and avoid duplication of efforts.
Thirdly, and most importantly, the decision to share search strategies is particularly important from an Indian context. It may be worthwhile to acknowledge that India has significant backlog of patent applications, which are pending examination. In an effort to reduce backlog, the patent office has recruited a large number of examiners, who are fresh out of college, with very little experience in the patent domain. Sharing of search strategies in public domain has a psychological impact on examiners, and may be motivated to improve their work quality, and thereby end up establishing ISR are at least at par with patent office that are know for their superior quality of search.
We welcome this initiative of the IPO that promotes transparency in terms of the work process and motivates examiners to perform at par with their global peers.
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India can now access WIPO’s file transfer systems
The Controller General of Patents, Designs & Trade Marks (CGPDTM) signed a Cooperation agreement with the Director General of World Intellectual Property Organization (WIPO) on October 5th, 2017 at Geneva, Switzerland. This Cooperation treaty enables the exchange of data such as priority documents between the Indian Patent Office (IPO) and the WIPO, using WIPO Centralized Access to Search and Examination (CASE) and WIPO Digital Access Services (DAS).
The WIPO CASE system enables patent offices to share search and examination documents related to patent applications in a secure manner. This allows patent examiners from different offices to share examination results and thus increase the efficiency and quality of their work for patent applications that are filed in multiple offices.
The WIPO DAS system enables IP offices to securely exchange priority documents and certified documents through an electronic system. Traditionally, while filing applications in multiple offices, applicants had to request certified paper copies of documents from one office and submit them to another. However, the WIPO DAS allows applicants to a) request the first office to make the priority documents available; and b) request other offices(s) to retrieve those documents using DAS. The offices can then use DAS to electronically transfer or exchange the required priority documents. The DAS provides an easy, secure and inexpensive system to quickly transfer documents between offices.
Once implemented, this agreement will greatly benefit the IPO as well as patent applicants by streamlining the process of getting a patent.
I hope you found our article informative.
Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together.
Best regards – Team InvnTree
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
Procedure after receiving ISR for PCT application from the chosen search authority
Once an Applicant of a PCT application receives an International Search Report (ISR) issued by the International Search Authority (ISA), the Applicant has the following options:
Option 1 – Do not respond to the International Bureau
The Applicant can choose not to respond to the International Bureau (IB), and thereafter decide on filing one or more national phase patent applications within 30 months (in some cases more than 30 months) from the priority date of the PCT application.
In our opinion, this option may be chosen when the ISR is “positive”, indicating a good probability of patent grant.
Alternatively, the Applicant may choose this option when the ISR is “negative”, indicating failure to meet patentability criteria, and the Applicant does not wish to file national phase patent applications.
Alternatively, the Applicant may choose this option when the ISR is “negative”, indicating failure to meet patentability criteria, and the Applicant wishes to pursue the matter further with national office(s) where national phase patent application(s) will be filed by the Applicant. In this case, the expenses involved in prosecuting national phase application(s) might increase.
Option 2 – Amend the patent specification (claims)
The Applicant can choose to amend the patent specification (claims) based on the observation presented in the ISA. Thereafter, Applicant can file one or more national phase patent applications within 30 months (in some cases more than 30 months) from the priority date of the PCT application.
The Applicant can have the amended specification considered for examination at the offices where national phase applications will be filed. The amendment may reduce the effort involved in prosecuting national phase applications.
The amendment shall be submitted to the IB within 2 months from the date of transmittal of the ISR to the Applicant or 16 months from the priority date, whichever time limit expires later.
Option 3 – Submit an “informal response”, without amending the patent specification
The Applicant can choose to submit an “informal response”, without amending the patent specification, based on the observation presented in the ISA. Thereafter, the Applicant can file one or more national phase patent applications within 30 months (in some cases more than 30 months) from the priority date of the PCT application.
The informal response may reduce the effort involved in prosecuting national phase applications.
The informal response shall be submitted to the IB within 30 months from the priority date, but preferably before expiry of 28 months from the priority date.
Option 4 – Amend the patent specification (claims) and submit an “informal response”
The Applicant can choose to amend the patent specification (claims) and submit an “informal response” based on the observation presented in the ISA. Thereafter, the Applicant can file one or more national phase patent applications within 30 months (in some cases more than 30 months) from the priority date of the PCT application.
The Applicant can have the amended specification considered for examination at the offices where national phase applications are filed. The amendment and the informal response may reduce the effort involved in prosecuting national phase applications.
The amendment shall be submitted to the IB within 2 months from the date of transmittal of the ISR to the Applicant or 16 months from the priority date, whichever time limit expires later.
The informal response shall be submitted to the IB within 30 months from the earliest priority date, but preferably before expiry of 28 months from the priority date.
Option 5 – Demand for International Preliminary Examination (Chapter II)
The Applicant can demand for International Preliminary Examination (IPE). Note that, statutory fee is associated with this demand. The fee will depend on the International Preliminary Examination Authority (IPEA) chosen by the Applicant.
An Applicant may choose this option if the ISR was “negative”, and the Applicant chooses to submit a response and/or amend the patent specification to pursue the IPEA to provide a “positive” International Preliminary Examination Report (IPER).
Note that, the opinion of the IPEA may not be binding on other national offices, if and when the Applicant files one or more national phase applications.
The proceedings during IPE may reduce the effort involved in prosecuting national phase applications.
The deadline for filing the demand is 3 months from the date of transmittal of the ISR or 22 months from the priority date, whichever expires later.
Option 6 – File national phase applications in Luxembourg, United Republic of Tanzania and Uganda
If option 5 is not chosen, and if patent protection is desired in Luxembourg, then a national phase application can be filed within 20 months from priority date of the PCT application. Alternatively, patent protection in Luxembourg can be sought by filing a national phase patent application in the European Patent Office within 31 months from priority date of the PCT application.
Similarly, if option 5 is not chosen, and if patent protection is desired in United Republic of Tanzania and Uganda, then national phase applications can be filed in the respective nations within 20 months from priority date of the PCT application. Alternatively, patent protection in United Republic of Tanzania and Uganda can be sought by filing a national phase patent application in the African Regional Intellectual Property Organization within 31 months from priority date of the PCT application.
InvnTree provides up to 30 minutes of free telephonic consultation to enable Applicants understand ISR and take a decision on the way forward.
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Best regards – Team InvnTree
