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 IP Services

InvnTree provides up to 30 minutes of free telephonic consultation to enable Applicants understand ISR and take a decision on the way forward.

We hope you found this article useful. Feel free to write to us at contact@invntree.com

Best regards – Team InvnTree

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