The International Search Report is received shortly after filing a PCT application. The International Searching Authority (ISA) conducts a search of prior art to assess the patentability of the invention. The ISA issues the International Search Report (ISR) with a Written Opinion (WO) on patentability. Inventors have the opportunity to briefly respond to any objections or observations raised in the International Search Report via an Article 19 Amendment. Applicants also have the right to ask for a full examination by filing a Chapter 2 Demand.
What is the International Search Report?
The International Search Report (ISR) and the Written Opinion express the opinion of the International Search Authority (ISA) on the patentability of the invention and a list of prior art references. All PCT applications will receive an International Search Report.
In general, we don’t recommend responding to these objections. Even if a response is filed, it won’t result in a binding decision on patentability during the national phase of the PCT.
What is the International Preliminary Report on Patentability?
Applicants can also request a full examination of the PCT application by filing a Chapter 2 demand. The International Preliminary Examining Authority (IPEA) will conduct a substantive examination of the invention to assess its patentability. The IPEA will then issue an International Preliminary Report on Patentability (IPRP), which includes a Written Opinion. The written opinion is an assessment of the invention’s patentability and any objections or observations.
Inventors can respond to the objections or observations raised in the International Preliminary Report on Patentability. However, the response won’t result in a granted patent because a PCT application never becomes a patent. However, a favorable assessment of patentability can be used to file a request for consideration under the Patent Prosecution Highway during the national phase of the PCT.
Is it a good strategy to have your PCT application examined during the international phase?
In my opinion, it may be better to have an examination done under the patent laws of your country.
The goal is to first obtain a notice of allowance in the first filed application. Thereafter, seek patent protection for these allowed claims in foreign countries under the Patent Prosecution Highway (PPH). Essentially, the examination and responses would be handled in the home country of the application.
The PPH allows the applicant to request that the examiner of the national phase application allow the same claims in the first filed application. The examiner isn’t required to evaluate the invention for novelty and nonobviousness. They can allow the case so long as the national phase application meets the local patent formalities. Although the PPH request isn’t binding on the examiner in the national phase application, it generally leads to a higher rate of allowances.
For example, typically, U.S. inventors would file a nonprovisional patent application with the United States Patent and Trademark Office (USPTO). A request to expedite the examination of the patent application is filed with the U.S. patent application. The first office action is received within 4 to 6 months which is fairly quick in terms of the examination timeline. By requesting expedited examination, plenty of time is left to argue with the examiner for the desired claims that might be exported to foreign countries. The goal is to secure a set of allowed claims worth exporting to other countries. Once the claims are allowed,
While examination in the United States is ongoing, the PCT application and the national phase application would have to be filed before the deadlines.
This strategy may be preferable to filing the Article 19 amendment or responses to the International Preliminary Report on Patentability during the PCT process.