EPO to be PCT ISA and IPEA Option in 2-Year Pilot Program Between IP Australia and EPO

IP Australia has advised that from 1st March 2026 applicants of PCT International Phase applications having IP Australia as the Receiving Office can select the European Patent Office (EPO) as the International Searching Authority (ISA) and the International Preliminary Examination Authority (IPEA).

Currently, for PCT International Phase applications where IP Australia is the Receiving Office, only IP Australia or the Korean Intellectual Property Office (KIPO) are available for the ISA and IPEA designations. If the International Preliminary Examination option is selected, usually the Office selected as the ISA is also selected as the IPEA. However, it is possible to choose IP Australia as the ISA and the KIPO as the IPEA, or vice versa.

In comparison, for PCT International Phase applications where the Intellectual Property Office of New Zealand (IPONZ) is the Receiving Office, since June 2004 IP Australia, the EPO, the KIPO or the USPTO are available for the ISA and IPEA designations. Although the EPO and USPTO offices can only be selected as the IPEA if they were selected as the ISA.

The option to select the EPO as the ISA and IPEA will be run as a pilot program for 2-years, with the option to select the EPO as the IPEA only being available if the EPO was selected as the ISA.

While applicants of PCT International Phase applications having IP Australia as the Receiving Office cannot currently select the EPO as the ISA, the EPO has been and remains available for conducting a Supplementary International Search (SIS). A SIS needs to be requested within 22-months of the priority data and can be useful if the SISA broadens the languages searched or has more technical proficiency in the technological fields of interest than the selected ISA

As more fully discussed in our prior article ‘Considerations When Choosing the PCT International Searching Authority’ there are a number of considerations to take into account when selecting the ISA, which is done when filing the International Application. These considerations include:

• The search fees charged by different ISAs can vary considerably. IP Australia charges AU$2,200. The KIPO charges AU$1,322 where the International Application is in English or AU$496 if it is in Korean. The EPO currently charges EUR 1,845 if it is selected as the ISA, which currently converts to around AU$3,260.
• 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.
• 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.

The fees charged by different IPEAs also vary considerably. IP Australia charges AU$590 or AU$820 if IP Australia was not the ISA. The KIPO charges around AU$475 whether or not it was selected as the ISA. The EPO currently charges EUR 1,915, which currently converts to around AU$3,410.

The pilot program will allow applicants who are most interested in the results of an IS by the EPO to obtain those search results quicker and cheaper than selecting the EPO for a SIS. However, where applicants want a search from the EPO but not have the expense of the EPO conducting the IPE, they can either select IP Australia or the KIPO as the IPEA or remain with the option of selecting the EPO for the purposes of a SIS.

IP Australia has also entered into a Memorandum of Understanding (MOU) with the Intellectual Property Office of Singapore (IPOS), with a view towards IPOS being selectable as an ISA and/or IPEA in the future, This will be particularly beneficial where Asian applicants are highly active in the relevant fields of technology. 

Authors: Quinn Miller and Pritesh Lohani

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