International Search Reports
What is an International Search Report?
An International Search Report (ISR) relates to an international PCT patent application, and is a written opinion on the patentability of a patent application performed by the international searching authority office. The international searching authority is chosen by the patent applicant when the applicant files a patent application through the Patent Cooperation Treaty (PCT) process.
When will the International Search Report be issued?
The PCT office must establish the International Search Report within three (3) months of receipt of the search copy by the international searching authority chosen by the applicant, or nine (9) months from the priority date, which ever is later.
What does the International Search Report Tell Me?
The International Search Report (ISR) includes, among other things, a citation to the patent and non-patent references the international searching authority considers most relevant to the examination of the application claims, a classification of the subject matter of the invention according to the international patent classification standards, and an indication of the fields and databases searched. The ISR is a preliminary and non-binding written opinion. It is not a conclusion of patentability or non-patentability of the invention that all countries rely upon, but more a guideline that patent offices in countries the applicant chooses later to file into can use in their examination. Most countries choose to perform their own searches in addition to the International Search Report.
The International Search Report gives a patent applicant an opportunity to consider how the cited references relate to their claims and whether the applicant wants to continue the application into patent offices of various countries with knowledge of the types of references that will be cited.
What are My Options for Responding to the ISR?
In response to an International Search Report, a patent applicant has really two options:
1: Take no action and wait until the Foreign National and/or Regional Stage Examination. Because the PCT Office has no authority to make any binding conclusions on the patentability of the application, a patent applicant is not required to respond at all. If no response is made, the application will continue to the Foreign National patent offices (of the countries chosen by the applicant) and/or the Regional patent office(s) (i.e. the European Union regional patent office) and will be examined through the examination processes of those offices for determination on whether a patent will be issued from those offices.
Often, because the National and Regional patent offices do their own searches, it is wise to do nothing and address any issues the National or Regional patent offices may raise at that time – rather than making changes in response to the International Search Report that may not have been necessary or required for a particular application.
2: Prepare and file an amendment to the application within the PCT Office so that the amended application can be sent to the various National and Regional offices. This option is used when there is a clear change needed in the application prior to moving to the National and Regional offices. However, because each National and Regional office will have its own set of changes and its own examination, unless the amendment is one that will be required in most or all of the National and Regional offices for this particular application, it is often more cost efficient to just wait for the National or Regional office to issue their own search opinion and formalities requirements to make changes to the applications. There is a time limit for when an amendment in response to the ISR can be filed that is based on the timing of the ISR. Please discuss this with your attorney if you think an amendment is needed.
3: File a Demand for Preliminary Examination to carry out full prosecution within the PCT Office. Full prosecution within the PCT Office does not result in a granted patent, but merely a more complete written opinion by the PCT Office of their evaluation of patentability. The various National and Regional patent offices are not limited by this full written opinion, however, and so the cost is generally not needed. An advantage of requesting a Preliminary Examination in the PCT Office is to have a more definite opinion from at least one examining patent office as to whether the invention might be patentable before incurring the expense of filing the application in a lot of countries.
There is a Non-Extendable Deadline for Filing ‘National Phase” Applications
When a PCT application is filed, ALL countries/regions that are part of the Patent Cooperation Treaty are automatically designated for potential patent protection at the time of filing. However, the patent applicant must still make a decision as to which countries it wishes to enter for the National/Regional Phase prior to the deadline for filing the application in the National/Regional Phase.
Regardless of whether an amendment or a Demand is filed, there is a non-extendible deadline of 30 months from the application priority date (the filing date of the earliest filed application the PCT application claims priority to – or the filing date of the PCT application, whichever is earliest), for filing ‘National/Regional Phase’ applications based on the PCT application. Here is a current list of PCT member countries into which applications can be filed from a pending PCT application. Whichever National or Regional patent offices into which an applicant wants to file must be decided and applications filed into those countries, with any required translations and all related paperwork, by the 30 month deadline, or the opportunity for filing into those countries is lost. Some very few countries allow for longer filing deadlines (31 or 32 months), and some even fewer countries (Luxombourg and Tanzania) only allow for 19 months before the National Phase application must be filed in those countries unless additional requirements are met. Please check with your attorney to develop a strategy for protecting your invention in the countries you want to have protection in.
International Search Reports can be informative, but can also significantly affect strategies for international patent protection. Please contact a qualified patent attorney at Booth Udall Fuller, PLC to discuss the specifics of your international patent filing and strategy needs to help your company achieve its greatest value. Our attorneys are experienced in developing invention protection strategies, international protection strategies, and assisting with any of your intellectual property needs.