1840    The International Searching Authority [R-5]

35 U.S.C. 362  International Searching Authority and International Preliminary Examining Authority.

  • (a) The Patent and Trademark Office may act as an International Searching Authority and International Preliminary Examining Authority with respect to international applications in accordance with the terms and conditions of an agreement which may be concluded with the International Bureau, and may discharge all duties required of such Authorities, including the collection of handling fees and their transmittal to the International Bureau.
  • (b) The handling fee, preliminary examination fee, and any additional fees due for international preliminary examination shall be paid within such time as may be fixed by the Director.

37 C.F.R. 1.413  The United States International Searching Authority.

  • (a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Searching Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Director, in accordance with the agreement between the Patent and Trademark Office and the International Bureau (PCT Art. 16  (3)(b)).
  • (b) The Patent and Trademark Office, when acting as an International Searching Authority, will be identified by the full title "United States International Searching Authority" or by the abbreviation "ISA/US."
  • (c) The major functions of the International Searching Authority include:
    • (1) Approving or establishing the title and abstract;
    • (2) Considering the matter of unity of invention;
    • (3) Conducting international and international-type searches and preparing international and international-type search reports (PCT Art. 15  , 17  and 18  , and PCT Rules 25  , 33  to 45  and 47  ), and issuing declarations that no international search report will be established (PCT Article 17  (2)(a));
    • (4) Preparing written opinions of the International Searching Authority in accordance with PCT Rule 43 bis   (when necessary); and
    • (5) Transmitting the international search report and the written opinion of the International Searching Authority to the applicant and the International Bureau.

The United States Patent and Trademark Office (USPTO) agreed to and was appointed by the PCT Assembly, to act as an International Searching Authority. As such an Authority, the primary functions are to establish (1) international search reports and (2) for international applications having an international filing date on or after January 1, 2004, written opinions. See PCT Article 16  and PCT Rule 43 bis   .

Pursuant to an agreement concluded with the International Bureau, the USPTO, as an International Searching Authority, agreed to conduct international searches and prepare international search reports and written opinions of the International Searching Authority, for, in addition to the United States of America, Barbados, Brazil, Egypt, India, Israel, Mexico, New Zealand, the Philippines, Saint Lucia, South Africa, and Trinidad and Tobago. The agreement stipulated the English language and specified that the subject matter to be searched is that which is searched or examined in United States national applications.

I.   TRANSMITTAL OF THE SEARCH COPY TO THE INTERNATIONAL SEARCHING AUTHORITY

The "search copy" is transmitted by the Receiving Office to the International Searching Authority ( PCT Article 12(1)  ), the details of the transmittal are provided in PCT Rule 23  .

II.   THE MAIN PROCEDURAL STEPS IN THE INTERNATIONAL SEARCHING AUTHORITY

The main procedural steps that any international application goes through in the International Searching Authority are (1) the making of the international search ( PCT Article 15  ), (2) the preparing of the international search report ( PCT Article 18  and PCT Rule 43  ) and (3) for international applications having an international filing date on or after January 1, 2004, the preparing of a written opinion of the International Searching Authority (PCT Rule 43 bis   ).

III.   COMPETENT INTERNATIONAL SEARCHING AUTHORITY

In respect of international applications filed with the U.S. Receiving Office, the United States International Searching Authority, which is the Examining Corps of the USPTO, is competent to carry out the international search ( PCT Article 16  , PCT Rules 35  and 36  , 35 U.S.C. 362  and 37 CFR 1.413  ).

The European Patent Office (EPO) or the Korean Intellectual Property Office (KIPO) may also be competent to carry out the international search (PCT Article 16  , PCT Rules 35  and 36  ) for international applications filed with the U.S. Receiving Office. See MPEP §§ 1840.01 - 1840.02 for further information regarding the competency of the EPO and the KIPO as an International Searching Authority for applications filed by U.S. nationals or residents in the USPTO or in the International Bureau (IB) as receiving Office.

1840.01   The European Patent Office as an International Searching Authority [R-5]

Since October 1, 1982, the European Patent Office (EPO) has been available as an International Searching Authority for PCT applications filed by U.S. nationals or residents in the U.S. Patent and Trademark Office (USPTO) as receiving Office or in the International Bureau (IB) as receiving Office. The choice of International Searching Authority, either the EPO ,the Korean Intellectual Property Office (KIPO) or the USPTO, must be made by the applicant on filing the international application. The EPO has expressed the following limitations concerning its competency to act as an International Searching Authority. For updates or possible changes to these limitations, applicants should consult the PCT Newsletter which is available in electronic form from the web site of the World Intellectual Property Organization (www.wipo.int/pct/en/newslett/) .

I.   SUBJECT MATTER THAT WILL NOT BE SEARCHED BY THE EPO

A.   Field of Biotechnology

The EPO is not a competent authority within the meaning of PCT Article 16  (3)(b), and will not carry out an international search in respect of any international application filed on or after March 1, 2002 and before January 1, 2004 if the application: (A) was filed with the USPTO as receiving Office by a national or resident of the U.S.; or (B) was filed with the IB as receiving Office by a national or resident of the U.S. (provided the application did not also identify as an applicant at its time of filing a national or resident of a European Patent Convention (EPC) Contracting State),where such application contains one or more claims relating to the field of biotechnology as defined by the following units of the International Patent Classification:

C12M  Apparatus for enzymology or microbiology 
C12N  Micro-organisms or enzymes; compositions thereof 
C12P  Fermentation or enzyme-using processes to synthesise a desired chemical compound or composition or to separate optical isomers from a racemic mixture 
C12Q  Measuring or testing processes involving enzymes or micro-organisms; compositions or test papers therefor; processes of preparing such compositions; condition-responsive control in microbiological or enzymological processes 
C07K  Peptides 
G01N 33/50 (including subdivisions)  Chemical analysis of biological material, e.g. blood, urine; testing involving biospecific ligand binding methods; immunological testing 
A61K 39  Medicinal preparations containing antigens or antibodies 
A61K 48  Medicinal preparations containing genetic material which is inserted into cells of the living body to treat genetic diseases; Gene therapy 
A01H  New plants or processes for obtaining them; plant reproduction by tissue culture techniques 

For information, U.S. classes covering the corresponding subject matter are listed below:

  424  Drug, bio-affecting and body treating compositions 
  435  Chemistry: molecular biology and microbiology 
  436  Chemistry: analytical and immunological testing 
  514  Drug, bio-affecting and body treating compositions 
  530  Chemistry: natural resins or derivatives; peptides or proteins; lignins or reaction products thereof 
  536  Organic compounds–part of the class 532-570 series 
  800  Multicellular living organisms and unmodified parts thereof 
  930  Peptide or protein sequence 

B.   Field of Business Methods

The EPO is not a competent authority within the meaning of PCT Article 16  (3)(b) and will not carry out an international search in respect of any international application filed on or after March 1, 2002 if the application: (A) is filed with the USPTO as receiving Office by a national or resident of the U.S.; or (B) is filed with the IB as receiving Office by a national or resident of the U.S. (provided the application does not also identify as an applicant at its time of filing a national or resident of an EPC Contracting State), where such application contains one or more claims relating to the field of business methods as defined by the following units of the International Patent Classification:

G06Q   Data processing systems or methods, specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes; systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes, not otherwise provided for 
G06Q 10/00  Administration, e.g., office automation or reservations; Management, e.g., resource or project management 
G06Q 30/00  Commerce, e.g., marketing, shopping, billing, auctions or e-commerce 
G06Q 40/00  Finance, e.g., banking, investment or tax processing; Insurance, e.g., risk analysis or pensions 
G06Q 50/00  Systems or methods specially adapted for a specific business sector, e.g., health care, utilities, tourism or legal services 
G06Q 90/00  Systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes, not involving significant data processing 
G06Q 99/00  Subject matter not provided for in other groups of this subclass  

For information, the U.S. class covering the corresponding subject matter is listed below:

705  Data processing: financial, business practice, management, or cost/price determination 

The U.S. Receiving Office will forward all international applications to the EPO as ISA if so indicated by the applicant and the EPO will perform a competence check on the search copy. Where the EPO finds that it was indicated as the ISA but the application falls under the limitations indicated above, the EPO will ex officio change the ISA from EPO to the USPTO and will inform the applicant, the International Bureau and the USPTO accordingly. The EPO will transfer moneys received as the search fee as well as the search copy to the USPTO.

C.    Declaration Under PCT Article 17(2)(a)(i) 

It should be noted that even when the European Patent Office is a competent International Searching Authority (for example, if one or more applicants is a resident or national of an EPC contracting state and the application was filed with the International Bureau as receiving Office), the EPO nonetheless will not search, by virtue of PCT Article 17(2)(a)(i)  , any international application to the extent that it considers that the international application relates to subject matter set forth in PCT Rule 39.1  .

II.   FEES FOR SERVICES OF THE ISA/EP

The international search fee for the European Patent Office must be paid to the USPTO as a Receiving Office within one month from the time of filing the international application. The search fee for the European Patent Office is announced weekly in the Official Gazette in United States dollars. The search fee will change as costs and exchange rates require. If exchange rates fluctuate significantly, the fee may change frequently. Notice of changes will be published in the Official Gazette shortly before the effective date of any change.

If the European Patent Office as the International Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in PCT Rule 13  , the European Patent Office will invite applicants to timely pay directly to it an additional search fee in Euros for each additional invention.

1840.02   The Korean Intellectual Property Office as an International Searching Authority [R-5]

Since January 1, 2006, the Korean Intellectual Property Office (KIPO) has been available as an International Searching Authority for PCT applications filed by U.S. nationals or residents in the U.S. Patent and Trademark Office (USPTO) as receiving Office or in the International Bureau (IB) as receiving Office. The choice of International Searching Authority, either the KIPO, the European Patent Office (EPO) or the USPTO, must be made by the applicant on filing the international application.

The international search fee for the KIPO must be paid to the USPTO as a receiving Office within one month from the time of filing the international application. The search fee for the KIPO is announced weekly in the Official Gazette in United States dollars. The search fee will change as costs and exchange rates require. If exchange rates fluctuate significantly, the fee may change frequently. Notice of changes will be published in the Official Gazette shortly before the effective date of any change.

If the KIPO as the International Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in PCT Rule 13  , the KIPO may invite applicants to timely pay directly to it an additional search fee in Korean won for each additional invention.