New Search Options for International Patent Applications

Article from our Winter 2008-2009 edition of InsideIP.

Following recent changes to the Patent Cooperation Treaty (PCT) Regulations, a supplementary search has become available for International patent applications (also known as PCT patent applications).

Before the change, a PCT application could only be searched by an International Search Authority (ISA) designated by the office at which the application was filed. This meant that the choice of ISA was determined by an applicant’s nationality or country of residence. The new regulations allow an applicant to request a further search from one or more other ISAs in addition to an existing International search.

The Supplementary International Search is intended to permit improved coverage of prior art in different languages, to avoid an applicant being surprised bynewly identified relevant prior art during national and regional phase processing.

This facility may prove particularly useful for foreign applications entering the European regional phase. Under current practice, the European Patent Office (EPO) performs a Supplementary European Search for International patent applications that have been searched by certain other ISAs, such as the United States Patent & Trademark Office (USPTO). The new scheme would permit a US applicant to request a Supplementary International Search from the EPO during the International Phase, so that further relevant prior art could be identified before national/regional phase entry.

Supplementary International Searches will be available for any International patent application with a filing date, or effective filing date, later than the 1st of May 2007. A request must be made within 19 months of the filing date, whether or not the International Search Report has issued. It may also be necessary to file a translation of the application into a language accepted by the chosen ISA. Any Supplementary International Search will be based on the claims as originally filed.

Supplementary International Searches are currently available from the Russian and Swedish Patent Offices and from the Nordic Patent Institute. The EPO intends to participate in the scheme from the 1st of January 2010. As yet, there is no indication as to whether the USPTO or the Japanese Patent Office will join the scheme in the near future.

Diana Pisani 13 Feb 2009

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