Good News for US PCT Applicants

Good News for US PCT Applicants

2014/11/17

In accordance with an announcement by the Israel Patent Office (ILPO) on October 1, 2014, and effective immediately, US PCT applicants will be allowed to select the ILPO “as an available International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA)… for certain international applications filed with the USPTO as a Receiving Office.”


To qualify, the applications must be submitted in the English language and the ILPO musty be chosen as a competent authority by the applicant. The number of applications under this arrangement will be limited to 75 per fiscal quarter. Furthermore, applications with one or more claims directed to the field of business methods, as determined through classification in G06Q of the International Patent Classification. will be excluded from this arrangement.


Why would a US applicant wish to use the ILPO as ISA and IPEA?

QUALITY: By entering this arrangement, the USPTO has, by definition, validated the quality of search provided by the ILPO.


SPEED: In a selection of sample cases checked by the undersigned, since the Israel Patent Office became a search and examination authority, our clients have consistently benefited from issuance of International Search Reports and Written Opinions within 15-16 months after the priority date.


COST: The fees charged by the ILPO are lower than those charged by both the USPTO and EPO.[i] A comparison of the international search fees charged by the US and other patent offices that may be chosen as an international searching authority may be found in the USPTO fee schedule (lines 1704-1709).


We note that the ILPTO will provide non-patent references only with payment of an additional fee.  The possibility that multiple non-patent references will be cited in certain biotechnology patent applications may be a consideration when choosing the ILPTO as a searching authority.


(Source: JMB)




People watch


It is lucky for Chen Jun to began his career in the IP industry 14 years ago when the first group of IP managers for businesses appeared on the stage in China and he has been in the industry.

It was this “Whampoa Military Academy” for IP that educated China’s first batch of corporate IP management personnel. Many of these engineers left Foxconn in the years since.