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India begins sharing search strategies in International search report

3D Render of Morph Man searching with magnifying glass

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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