After Searching: Patent Filing Options and PCT ISAs

By Stephan Sangwon Kim
November 8, 2015

patent-map-globe-335bWhile a company is interest is obtaining patents in its country, companies may also be interested in protecting their inventions beyond their territories. Companies seeking foreign protection must address this issue on a country-by-country basis. The costs for obtaining foreign patent coverage are exceedingly expensive. Furthermore, there are timing restrictions for filing the patent application in foreign countries. If you fail to file within the prescribed times, the applicant may lose all sought out rights in the foreign countries.

It is therefore necessary to balance the cost factor of obtaining the patents, the significance of obtaining patents in particular countries, the timing needed to obtain patents, and other information, in order to advise your client on how to proceed in order to protect his invention in other parts of the world outside their own territories.

Conventional Applications

When an applicant files a patent application, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries, is called a convention application. To get convention status, an applicant should file the application before any of the patent offices within 12 months from the date of the first application in the convention country.

PCT- International Applications

The Patent Cooperation Treaty or PCT is an international agreement for filing patent applications. The PCT application does not provide for the grant of an international patent, it simply provides a streamlined process for the patent application process in many countries at the same time. Some of the benefits of the system are as follows; it simplifies the process of filing patent applications i.e., an applicant can file a single international patent application in one language with one receiving patent office in order to simultaneously seek protection for an invention in up to 148 countries throughout the world. It provides an internationally recognized priority date, which has an effect in each of the countries designated.

The PCT application will be searched and examined in the office you select for that purpose – what office(s) you may select from depends on where you are a citizen or resident. U.S. companies may use either the U.S. Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Korean Intellectual Property Office (KIPO), IP Australia (IPAU), the Israel Patent Office (ILPO) or the Russian Patent Office (Rospatent), and Japan Patent Office (JPO) as searching authorities.


These offices will issue an International Search Report (ISR) and an International Preliminary Report (IPER) on patentability, which will give a company another look at patentability from your priority application (especially if you selected another office than the one in which the priority application was filed), and might include other art that the national examiner cited.

According to WIPO data, USPTO, EPO and KIPO are major ISAs for U.S. applicants; about 94% of intentional searches have been done by these three patent offices. U.S. applicants may consider the quality of search reports and cost of search fees as the most important factors in selecting an ISA. Search fees vary by ISA, for example, EPO’s rate is relatively high $2,125, USPTO’s rate is $2,080, and KIPO is well known to provide high quality earches with a relevantly competitive cost at $1,125.

 

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[Source : WIPO statistics database, Aug 2015]

Each ISA has their own search database, in order to access patent related publications from not only the U.S. and Europe but also from Korea, Japan, China. Search databases must be able to provide a broad number of resources in order to determine whether the search report satisfies a certain quality. If a good amount of the research in a particular file is done overseas (e.g., Korea, China, Japan, and Europe), it may be better to select ISAs and to conduct parallel searches focused in specific regions. For example, some large electronics and automotive companies file myriads of applications in Korea, China, and Japan every year. In fields such as pharmaceutical, medical devices, and nuclear power – Europe is typically a better source of prior art. It is known that some of industry leaders such as, Intel, HP, 3M, and Google are using KIPO as their ISA due to understanding of the importance of finding relevant prior art based on broad search coverage database including U.S., Europe, Japan, China, Taiwan, and Korea, and considering high search quality, and costs.

The table below depicts regional coverage of search report by each ISAs, e.g., regional search coverage ratio – cited prior art published or patented in the ISA’s own country and cover to other countries depending on subject matter. As mentioned above, quality of search is based upon how relevant prior art of a related region is cited and analyzed in a search report.

 

[Source : 2014 PCT Metrics]

[Source : 2014 PCT Metrics]

An ISR may be favorable if a search report (prior art) is cited to cover the most relevant region, because it assists companies in the further processing of the application in other countries in which you wish to obtain protection.

Intellectual Property continues to be a valuable asset within the business world. However, to adequately protect intellectual capital, a business must have the counsel of an experienced IP attorney, who works closely with the R&D (development departments) to assist them in meeting their goals and expectations. One tool to assist this process is the proper searching, analysis of the search results, and necessary opinions, which can be tailored to meet the particular requirements dictated by the situation. Through the early solicitation of IP opinions and frequent and clear communication between the R&D and in house IP attorneys, a company should be able to maximize their IP assets and minimize capital expenditure and risk.

The Author

Stephan Sangwon Kim

Stephan Sangwon Kim is a patent attorney with Revolution IP, PLLC, located in Alexandria, Virginia. His practices are focused primarily on assisting 500 fortune companies, startups, and universities with navigating patents to assist resolving patent disputes and preparing and prosecuting patent applications. He can be reached at (703)909-0292 or skim@revolutioniplaw.com.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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There are currently 1 Comment comments.

  1. Eric Berend November 9, 2015 6:24 pm

    Thank you for this article – this is excellent work. All inventors and their representatives can benefit from improved visibility into these critically important patent search capabilities.

    Since it is seldom feasible to invest IP protection resources into every possible territory, there is almost always a cost-and-benefit analysis involved. Knowing greater details of the trade-offs as actually implemented, is very helpful in maximizing the efficiency and effectiveness of such efforts.