Updates on Patent Cooperation Treaty (PCT) Information – 11/3/20
Considering international patent protection for your invention?
The Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organization (WIPO) and various authorized offices around the world, makes it possible for inventors to seek international patent protection from over 150+ contracting states through a unified international patent application process.
International patent applications can be filed under the PCT with the United States Receiving Office or an International Bureau (IB) as the Receiving Office.
The USPTO recognizes the following International Bureaus as Searching and Examining Authorities for applications filed “where at least one of the applicants is either a national or resident of the United States of America.”
The European Patent Office (EPO)
International Searching Authority (ISA)
International Preliminary Examining Authority (IPEA)
Noted Restrictions:
“In applications containing claims relating to business methods where the subject matter of the application also contains technical features, the EPO will perform a search for those parts of the application which are more than mere business methods. However, the EPO may issue a declaration under PCT Rule 17(2)(a) that no ISR will be established whenever an application relates only to a business method as such. The EPO will act as an IPEA only if it also acted as the ISA.”
The Korean Intellectual Property Office
International Searching Authority (ISA)
International Preliminary Examining Authority (IPEA)
The Australian Patent Office (IP Australia)
International Searching Authority (ISA)
International Preliminary Examining Authority (IPEA)
Noted Restrictions:
“IP Australia will not act as an ISA if it has received more than 250 international applications from the USPTO during a fiscal quarter.”
“IP Australia will act as an IPEA only if it also acted as the ISA.”
Russia (Rospatent)
International Searching Authority (ISA)
International Preliminary Examining Authority (IPEA)
The Israel Patent Office (ILPO)
International Searching Authority (ISA)
International Preliminary Examining Authority (IPEA)
Noted Restrictions:
“The quarterly limit accepted by the ILPO has been increased to 100 international applications during a fiscal quarter.”
International Searching Authority (ISA)
International Preliminary Examining Authority (IPEA)
The Japan Patent Office (JPO)
Noted Restrictions:
“JPO will act as an ISA where the JPO has not received more than 8,400 international applications from the USPTO during the 5-year period from July 01, 2018, to June 30, 2023, and not more than 300 applications per quarter during the first and second years, and not more than 500 applications per quarter during the third, fourth, and fifth years.”
International Searching Authority (ISA)
International Preliminary Examining Authority (IPEA)
The Intellectual Property Office of Singapore (IPOS)
Noted Restrictions:
“The IPOS will act as an IPEA only if it also acted as the ISA.”
Your intellectual property may be secure here at home, but protecting and enforcing your Intellectual Property Rights in other jurisdictions requires proper planning and management. At Founders Legal, we can help you develop a strong IP strategy to safeguard your business’ most valuable assets overseas.
Click here to learn more about our Intellectual Property team.
