Considerations When Choosing the PCT International Searching Authority

This is similarly the case for the 41 PCT Contracting States that do not act as ROs. The table below gives a breakdown of the current 157 PCT Contracting States and Regions according to the number of ISAs that are deemed competent to undertake the international search.

# of ISAs Deemed Competent: No Info  /  1  /  2   /   3   /   4   /   5   /  6  /  7  /  8
# of States and Regions:                 2  /  31  /  36  /  27  /  34  /  14  /  5  /  4  /  4

Nearly all of the ROs that deem one ISA to be competent specify the European Patent Office (EPO) as that ISA. Most of those are EPC member states or allow the extension or validation of a European Patent. Interestingly, despite Austria being an ISA only the EPO can be an ISA when Austria is the RO. The other ROs that deem one ISA to be competent are Canada with the Canadian IPO being the ISA and Papua New Guinea with IP Australia being the ISA.

From WIPO IP statistics it can be seen that Asian countries are increasingly dominant in patent filings. In 2020 51.7% of PCT International Phase applications had the IPOs of China, Japan, South Korea or Singapore as the RO, up from 49.8% in 2019 and 48.1% in 2018. Outside of the PCT system, for direct patent filings by residents 78.5% of the worldwide total in 2020 was made in the IPOs of those four countries, up from 76.9% in 2019 and 78.4% in 2018. It is further noteworthy that direct filings by residents in China, Japan and South Korea range from 10 – 20 times the number of direct filings by non-residents in each of those countries. Also, residents of China, Japan and South Korea file significantly more applications in their home country compared to what they file abroad. The IPOs of China, Japan, South Korea and Singapore also act as ISAs for PCT International Applications and collectively accounted for 55.2% of ISA designations in 2020, up from 53.6% in 2019.

Given these patterns and trends patent searches not adequately covering the patent databases of those four countries are increasingly unlikely to be robust. As machine translation still needs improvement there is likely to be mounting pressure to have the international search conducted by one of those four IPOs. Yet currently, apart from those four countries, only 28 other PCT Contracting States allow the IPO of one or more of those four countries to be an ISA. While there is a supplementary search option under the PCT, of those four IPOs only the Singapore IPO provides a supplementary search and it has been barely utilised, with just 2 performed in 2020 and 4 in 2019.

WIPO has recently outlined a list of factors to consider when choosing between the available ISA’s, including:

• If the applicant is a national of a different contracting state to the one they are resident in they may wish to consider filing in the RO associated with the state they are a national of if one of the ISAs associated with that RO is considered preferable to the ISAs associated with the state they are resident in.
• If the application is filed in a language that is not accepted by the preferred ISA, then a translation will need to be provided to the ISA.
• The search fees charged by different ISAs can vary considerably.
• There is variation in the quality and timeliness of international searches carried out by the different ISAs as given in the PCT International Authority Quality Reports and timeliness statistics reproduced in the PCT Yearly Review.
• PCT Rule 39 allows ISA to not search an international application if its subject matter is listed in items (i) to (vi) of that Rule – which covers generally excluded subject matter. Some ISAs have indicated that they will search such subject matter.
• The available choices for the IPEA may be constrained by the choice of ISA.
• Choosing an ISA that can readily search prior art in a region that is known to be strong in the relevant field of technology.
• Choosing an ISA that can readily search prior art in key states where national phase will be entered.
• Some ISAs have PCT Patent Prosecution Highway agreements with particular states, which could prove beneficial during national phase.
• A Supplementary International Search cannot be requested via the chosen ISA.

Author: Quinn Miller