During the patent application process, have you ever encountered someone who used the PCT International Search Report to predict the grantability of a national phase application? It’s important to understand that the international search report may bring about unwarranted optimism or undue concern. If you know someone in this situation, consider sharing this article with them.

PART 1: What is the PCT International Search Report?

When filing a PCT international application, applicants typically need to pay three types of fees: the international filing fee, the search fee, and a small transmittal fee.

The search fee primarily covers the cost of the International Searching Authority (ISA) conducting a search on the PCT application during the international phase. This fee ranges from approximately 150 to 2,000 Swiss Francs, depending on the chosen ISA.

The search fee must be paid within one month from the date the Receiving Office receives the international application.

Can an applicant choose to forgo the international search?

In fact, the international search is a necessary procedure for PCT international applications. As stipulated in Article 15(1) of the PCT Treaty:

(1) “Each international application shall be the subject of international search.”

Additionally, according to Rule 16bis of the PCT Regulations and Article 14(3) of the Patent Cooperation Treaty:

Rule 16bis.1: If the applicant fails to pay any or all fees within the prescribed time limit, the Receiving Office shall invite the applicant to pay the missing amount together with a late payment fee within a one-month period from the date of the invitation.

Article 14(3)(a): If the Receiving Office finds that the fees referred to in Article 3(4)(iv) have not been paid within the prescribed time limit or that the fees prescribed in Article 4(2) have not been paid for any designated State, the international application shall be considered withdrawn, and the Receiving Office shall so declare.

From the above provisions, it is clear that the search fee is mandatory. If the fee is not paid within the deadline, the Receiving Office will invite the applicant to pay the missing amount along with a late payment fee within one month. If payment is not made within this one-month period, the international application will be considered withdrawn.

A few months after submitting the PCT application, the applicant will receive an International Search Report (ISR) and a Written Opinion from the International Searching Authority.

The report lists the relevant patent documents found during the search and provides an opinion on the novelty, inventive step, and industrial applicability of the application. These opinions typically fall into three categories: wholly positive, partially positive, and wholly negative. The following examples illustrate these three situations.

Wholly Positive Written Opinion

A wholly positive written opinion generally indicates that all the claims are considered novel, inventive, and industrially applicable. As shown in the example below:

Partially Positive Written Opinion

A partially positive written opinion typically indicates that while some of the claims are considered novel, inventive, and industrially applicable, others may not meet these criteria. Here is an example:

Wholly Negative Written Opinion

There are also instances where the patent’s novelty and inventive step are entirely negative. This situation is depicted in the example below:

PART 2: Can the PCT International Search Report Determine Granting?

Let’s first explore two common misconceptions about the PCT International Search Report.

Common Misconceptions:

Q: Does a positive International Search Report (ISR) from the PCT mean that the PCT application is granted?

A: No, the PCT system does not grant patents. Patents are granted individually by national or regional patent offices once the application enters the national phase. Confusion about PCT granting or an “international patent” is a misunderstanding.

Q: Can the PCT International Search Report influence the granting of national patents in the national phase?

A: The PCT International Search Report and Written Opinion are evaluations conducted during the international phase of the PCT application. They do not have a decisive impact on whether a national patent application will be granted in the national phase.

The Utility of the PCT International Search Report

People familiar with PCT basics generally avoid the first misconception, but the second misconception is prevalent among many.

When it comes to PCT Written Opinions, should a negative opinion lead to abandoning national phase entry? Should a positive opinion mean proceeding securely to the national phase? Or should a partially positive opinion prompt revisions for a grant?

These decisions, while not entirely incorrect, may not always be the wisest.

Why?

Because many countries’ national phase examinations typically do not rely heavily on the PCT International Search Report and Written Opinion.

The United States is a prime example:

When a PCT application designating the US, the USPTO conducts its own examination process, independent of the PCT International Search Report. This process involves its own search and examination procedures, which may differ significantly in language, technical interpretation, and search methodologies from those used during the international phase.

What does this mean?

It often results in the USPTO’s examination findings potentially contradicting the conclusions drawn from the PCT Written Opinion.

So, is the PCT International Search Report useless if it doesn’t decisively influence national phase applications?

Not entirely.

PART 3: Is the PCT International Search Report Useless?

While the PCT International Search Report may not determine the success of national phase applications, it is far from useless. In fact, operationally, the PCT stage search report serves to support our strategies for entering national phases.

Facilitating PPH for Accelerated Examination

One significant role of the PCT International Search Report is its contribution to the Patent Prosecution Highway (PPH). According to the provisions of the PCT (Patent Cooperation Treaty), receiving a positive or partially positive search report allows applicants to utilize the PPH for accelerating examinations in various countries.

What is PPH?

PPH is an international cooperation mechanism and an accelerated examination pathway applicable between different national and regional intellectual property offices.

Through the PPH mechanism, applicants can leverage the positively assessed international search report from the PCT stage to request expedited examination of their national phase patent applications in participating countries. This effectively shortens the examination timeline.

According to statistics from USPTO, standard US patent applications without acceleration typically receive a first Office Action about 25 months from their filing date. In contrast, applications processed via the Patent Prosecution Highway (PPH) receive their first Office Action within 2-3 months of PPH request, significantly shortening the authorization cycle.

A Risk Mitigator

Negative written opinions also play a crucial role. Applicants can adjust their applications based on these opinions to reduce risks associated with national phase filings from PCT. The international search report and written opinions serve as prompts and guidance, particularly in strengthening the inventive aspects of the application.

Enhancing Inventiveness

While a lack of inventiveness noted in the written opinion doesn’t necessarily mean a similar outcome in national phase examinations, it prompts applicants to bolster the inventive aspects for a stronger application. However, modifying claims to enhance inventiveness may impact the scope of protection and may not be necessary before entering national phase examination unless expedited authorization is the goal.

Flexibility in Strategy

By strategically placing enhanced inventive content in the specification and adapting during national phase examinations, applicants can mitigate authorization risks and potentially secure higher-value protection.

Conclusion

In conclusion, while PCT international search reports do not determine patent grant outcomes, they facilitate expedited examination through the PPH mechanism across various countries. They also provide valuable guidance and prompts for applicants. Therefore, their inability to decide on patent grant should not undermine their inherent value.

This article aims to enhance understanding of the PCT international search report’s role, helping to avoid unnecessary anxiety stemming from misunderstandings.