PCT Newsletter 04/2011: Practical Advice

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

The circumstances in which an applicant may wish to request that a supplementary international search be carried out

Q:  I have already paid for international searches in respect of a number of international applications that I have filed.  Bearing in mind that international searches are supposed to be of high quality, why might I want to request a supplementary international search?

A:  All International Searching Authorities (ISAs) under the PCT are supposed to deliver high quality international search reports (ISRs), which are sufficient for normal purposes.  Even though the international search covers not only PCT minimum documentation but also the additional range of documentation which would be searched by the ISA in its role as a national office, the fact remains, nevertheless, that no search can be guaranteed to find all the relevant prior art – some ISAs have access to different databases and their examiners will be skilled in different languages from others, such that there are certain situations where it may be useful for you to request that a supplementary international search be carried out (see PCT Rule 45bis).

It is particularly important to bear in mind that entering the national phase in many countries is costly and there will always be the possibility that new prior art will be found during the national phase which, if you had known about it earlier, may have prompted you to decide either not to enter the national phase, or else to amend the international application significantly before doing so.  A supplementary international search can help you reduce that risk.

Note that the Offices which are available to you to choose as ISA are essentially decided by the receiving Office with which the international application is to be filed and, in most cases, it is a fairly short list.  If you have any choice at all, you will probably make your decision on a combination of cost¹, typical timeliness of delivery of the international search report² and perceived quality of the search.  However, as far as supplementary international search is concerned, you can request any Authority offering the service to do this, regardless of the receiving Office with which you file the international application (the only restriction is that you cannot request a supplementary international search by the same Office which is carrying out the main international search), and you are permitted, if you wish, to request more than one supplementary international search on the same international application.  Supplementary international searches are currently offered by the following ISAs (Authorities specified for supplementary search (“SISAs”)):

AT     Austrian Patent Office

EP    European Patent Office

FI      National Board of Patents and Registration of Finland

RU    Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent)

SE    Swedish Patent and Registration Office

XN    Nordic Patent Institute

You may wish to base your choice of SISA on the scope and price (the fee amounts can be seen in Fee Table I(c) in this issue) of a supplementary international search, which are determined by each SISA individually:

• The Austrian Patent Office offers a choice of services at different prices:  German language documentation for around half of the normal fee for an international search, European and North American documentation for slightly more, or the equivalent of a full international search.
• Rospatent normally offers a low cost search of essentially Russian language documentation and certain other patent documentation of the former Soviet Union and CIS States, but where the main ISA has declared that no ISR will be established because the application concerns a method of treatment of the human or animal body, the Office will charge a higher price and conduct the equivalent of a full international search.
• All other ISAs offering the service will conduct the equivalent of a normal international search at the same price as for a normal international search.

You should be aware, however, that you may need to provide a translation if the international application was filed in a language not accepted by the SISA – see the corresponding SISA Annex of the PCT Applicant’s Guide for information on the languages accepted by a particular SISA. 

The most common situations where you might want to request a supplementary international search are the following:

• The international application is a particularly important one, either in commercial terms or else in terms of the number of countries where you are thinking of entering the national phase.
• The field of technology of the international application is one where significant collections of prior art are published in a language of one of the SISAs which is not an official language of the main ISA.
• You had particularly wanted an international search by a specific ISA which also acts as SISA but it was not one of the options offered by your receiving Office.
• You were surprised by how little relevant prior art was found in the main international search and would like a “second opinion” before committing to the cost of the national phase.
• The SISA is one of the Offices before which you intend to enter the national phase – the Office might recognize the supplementary international search as taking the place, either completely or in part, of a national search.  Note that in the case of the European Patent Office, it offers a reduction in the supplementary European search fee in the case of an SISR drawn up by the Austrian Patent Office, the National Board of Patents and Registration of Finland, the Swedish Patent and Registration Office or the Nordic Patent Institute.

Before requesting supplementary international search, you should therefore consider the main ISR, the potential commercial value of the particular application, and the number of disclosures relevant to the particular technical field which are known to be made in languages that are not a speciality of the main ISA.  It is useful to be aware of the option of supplementary international search so that you can request it in cases where it will be useful.  It can give extra information in some cases where the applicant believes that this additional expense in the international phase will be worthwhile.

If you decide that you want a supplementary international search, the request and payment of fees need to be made to the International Bureau (not to the relevant Authority) by 19 months from the priority date, using Form PCT/IB/375.  The SISA will begin SIS on receipt of the supplementary search request and ISR, or 22 months from the priority date, at the latest, if the ISR is late.  The SISR will be established by 28 months from the priority date.  Note that SIS is carried out on the claims as filed, usually on the first claimed invention – amendments under PCT Articles 19 or 34 are not taken into account.  Further information on requesting supplementary international search has been published in PCT Newsletter No. 12/2008, cover page and page 14, at:

https://www.wipo.int/edocs/pctndocs/en/2008/pct_news_2008_12.pdf

and No. 02/2009, page 9, at:

https://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_02.pdf

as well as in the PCT Applicant’s Guide – see paragraphs 8.001–8.053 at:

https://www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf