1840 The International Searching Authority [R-07.2022]
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 CFR 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 43bis (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 43bis.
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, Bahrain, Barbados, Brazil, Chile, Dominican Republic, Egypt, Georgia, Guatemala, India, Israel, Jordan, Mexico, New Zealand, Oman, Panama, Peru, Philippines, Qatar, Saint Kitts and Nevis, Saint Lucia, Saint Vincent and the Grenadines, South Africa, Thailand, 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 43bis).
III. COMPETENT INTERNATIONAL SEARCHING AUTHORITY
In respect of international applications filed with the U.S. Receiving Office, the United States International Searching Authority 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), the Korean Intellectual Property Office (KIPO), the Australian Patent Office (IP Australia) (IPAU), the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Israel Patent Office (ILPO), the Japan Patent Office (JPO), and the Intellectual Property Office of Singapore (IPOS) 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. The choice of International Searching Authority (ISA) must be made by the applicant on filing the international application. See MPEP §§ 1840.01 – 1840.07 for further information regarding the competency of the EPO, KIPO, IPAU, Rospatent, ILPO, JPO, and IPOS 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.
The international search fee for the selected ISA must be paid to the USPTO as a receiving Office within one month from the time of receipt of the international application. The search fee amounts for the competent International Searching Authorities are found in each weekly edition of 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 selected ISA considers that the international application does not comply with the requirement of unity of invention as set forth in PCT Rule 13, the ISA may invite applicants to timely pay directly to it an additional search fee in the currency accepted by the ISA for each additional invention.