Korea to be available as a searching authority for US PCT filers

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December 22, 2005

Summary: patent applicants who file PCT applications in the RO/US (the PCT Receiving Office of the USPTO) will, from January 1, 2006, be able to choose Korea to serve as International Searching Authority. This adds a third option to the long-standing options of choosing the USPTO or the EPO to serve as ISA.

History: The firm of Oppedahl & Olson LLP played a part in this change. We wrote a series of letters to the Director of the USPTO in 2004 and 2005, identifying pending PCT applications in which the USPTO had fallen behind in its responsibilities to perform searches timely for PCT applications. Finally in August of 2005 we wrote to the Director pointing out that if the USPTO were to "specify" (this is the word used in the Treaty) additional searching authorities to be available to those who file PCT applications in the USPTO Receiving Office, this would permit filers to select less expensive Searching Authorities. This might reduce the number of filers who would select the USPTO as searching authority, and if so, it would free up patent examiners for examining regular US patent applications. You can see our letter to the Director and the Director's response.

The American Intellectual Property Law Association also played a part in this change. On October 29, 2005, the Association adopted the following Resolution:

RESOLVED that AIPLA favors, in principle, providing flexible options to PCT Applicants in the selection of International Search and Preliminary Examination Authorities (ISA/IPEA); and
Specifically, supports making available to PCT Applicants eligible to file in the USPTO as a Receiving Office as many International Searching Authorities and International Examining Authorities as agree to search and examine PCT applications in the English language.

On November 25, 2005, AIPLA sent a letter to the USPTO communicating this Resolution.

Now comes the good news that USPTO has indeed specified Korea, with effect from January 1, 2006.

Consequences for filers: This development affects PCT filers in several ways.

Selecting a searching authority. If you are filing a PCT application in the Receiving Office of the USPTO (the "RO/US"), traditionally you would have to choose between the ISA/US (USPTO as International Searching Authority) and the IS/EP (European Patent Office as ISA). The EPO traditionally cost about double the price for the US. This meant that for a filer in the RO/US who wanted the least expensive possible PCT search, the correct answer was to select "US" as the ISA.

In the special case where there had been a previous application filed in the USPTO, it has been and is possible to ask the ISA/US to use the "previous search", in which case the cost for the search is $300.

From January 1, 2006, however, there will be an additional option, namely to select ISA/KR (the Korean Intellectual Property Office as International Searching Authority). The price per invention for this searching authority is $218. This is summarized in the following table.

Fees as of January 1, 2006 Seach fee, per invention
European Patent Office $1871
US Patent and Trademark Office $1000
US Patent and Trademark Office (special case where there is a previous US search and the PCT filer asked that it be used) $300
Korea Intellectual Property Office $218

In the case where a filer has not previously filed a US patent application (that is, where the $300 fee is not available), then by far the least expensive option for the PCT search is Korea, at $218. This is cheaper than then next-least-expensive searching authority (the US) by $782.

Timeliness of search results. It is commonplace for USPTO to be extremely tardy in completing its PCT search reports. We have seen PCT search reports from USPTO arrive at 20 or 30 or 35 months after the priority date. (They are supposed to arrive three months after the USPTO receives the search copy, or nine months after the priority date, whichever is later. This date is generally well in advance of the 18-month publication.) It is too soon to know how KIPO will do in getting its searches done on time. But for some PCT filers, the chief reason for filing a PCT is not to get a search, but is instead simply to postpone the need for foreign filing to 30 months. For such filers, it may not matter much whether KIPO is prompt or late. Those filers may feel that a late search report that costs only $218 is better than a late search report that costs $1000 (or $1871). Besides, maybe it will turn out that KIPO searches will be more timely than USPTO searches.

Quality of search results. It is likewise too soon to know how US filers will feel about the quality of KIPO searches. Will US filers find the KIPO searches to be equally well done as compared with, say, USPTO searches? Some ISA/US searches are poorly done, at least by comparison with the first Office Action that comes when the US national stage is entered in the same application. Filers who have received such ISA/US searches may well feel that a $218 search from KIPO, even if it is not well done, is preferable to a poorly done $1000 search from USPTO. Besides, maybe it will turn out that KIPO searches will be comparable to or better than USPTO searches.

The consequences if there is more than one invention. It should be recalled that if the Searching Authority decides that the PCT application contains more than one invention, it will invite the applicant to pay additional fees. Only if the additional fees are paid will the additional inventions be searched. Thus, for example, if the application contains eleven inventions and if ISA/EP is chosen, the additional fees to pay will be $18,710 (ten times $1871). If ISA/US is chosen, the additional fees to pay will be $10,000. Finally, if ISA/KR is chosen, the additional fees to pay will be $2,180.

Suppose the filer did previously file a US application, thus qualifying for the $300 PCT search fee for ISA/US. Suppose further that the searching authority decides that the PCT application contains eleven inventions. What will be the additional fees that the filer is invited to pay? Will it be ten times $300 or ten times $1000? The answer is that it will be ten times $1000.

It is clear that for the applicant who knows or suspects that there will be an invitation to pay additional search fees, there is a lot of money to be saved by selecting Korea as the searching authority.

If you file in the RO/IB. This change regarding RO/US is not limited in its effects to PCT filings in the RO/US. It also affects some applicants who file in the RO/IB (the PCT Receiving Office of the International Bureau of WIPO). For a PCT application having at least one applicant who is a citizen or domiciliary of the US, and who is filing with the RO/IB, from January 1, 2006 it will be possible to select Korea as the International Searching Authority (and International Preliminary Examining Authority). One reason this is important is that if a US PCT filer wishes to file electronically rather than on paper, the only place to do the filing is in the RO/IB. (RO/US does not accept electronic filings.)

Choosing an International Preliminary Examining Authority. USPTO has specified KIPO not only as an ISA but also as an IPEA. Thus, a PCT filer may wish to consider not only the choice of ISA but also the choice of IPEA.

Most PCT filers don't choose IPEAs any more. Although the number of PCT applications filed has increased over the past few years, the number of Demands for Preliminary Examination has plummeted. demands filed See this graph (courtesy of WIPO) showing that by September 2005, the percentage of International Applications for which a Demand for Preliminary Examination had been filed by the 19th month is now below ten percent. A chief reason for this drop is that for all but five countries, it is now possible to get the full 30 months of delay (rather than 20 months) even without filing a Demand. (For those remaining five countries, it is possible to obtain protection at the 30th month even without filing a Demand, through regional filings.)

Nonetheless, there are still some circumstances under which a filer might wish to file a Demand. If, for example, the Written Opinion is unfavorable, then the filer may wish to file a Demand in the hopes of obtaining an IPRP that is more favorable. This table compares the cost, per invention, of preliminary examination. As may be seen, the cost per invention for examination is much cheaper ($222) in Korea as compared with the US ($600) or Europe ($1817).

Fees as of January 1, 2006 Preliminary Examination fee, per invention
European Patent Office 1530 Euros (about $1817)
US Patent and Trademark Office $600
US Patent and Trademark Office (special case where the International Search was not carried out by USPTO) $750
Korea Intellectual Property Office 225000 Korean Won (about $222)

Here is the full text of the USPTO press release.

United States and Korean Patent Offices Enter Into Agreement on International Search and Examination Services
Part of USPTO effort to reduce backlog of U.S. national patent applications
The U.S. Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO) entered into an agreement this week in which KIPO will act as an available international searching and examining authority for international applications filed with the USPTO under the Patent Cooperation Treaty (PCT). The agreement will allow applicants additional flexibility to choose a given international authority based on the technology disclosed in the international application, speed of services provided and cost of obtaining searches and examination of international applications. The agreement goes into effect January 1, 2006. Additionally, this action will benefit the ongoing USPTO efforts to bring down the growing backlog of U.S. national patent applications waiting to be examined.
The USPTO receives over 350,000 patent applications per year. If PCT applicants take advantage of the availability of KIPO to perform international searches and examinations, the USPTO can dedicate more resources to reducing the backlog of pending national applications, with the goal of increasing productivity and quality.
Under the terms of the agreement, an applicant designating KIPO as the International Searching Authority (ISA) will pay a search fee of $218 instead of $300 or $1000, as applicable if the USPTO is the ISA. An applicant designating KIPO as the International Preliminary Examining Authority (IPEA) will pay an international examination fee to KIPO equivalent of $218 instead of $600 or $750, as applicable if the USPTO is the IPEA. Applicants filing international applications with the USPTO may, generally, also elect to have them searched and/or examined at the European Patent Office.
The PCT is an international agreement that simplifies the filing of patent applications in its 128 member states. A PCT application may be used as a national application for a patent in any of the designated PCT countries. International applicants request PCT search and examination reports to help them determine if an application meets basic patent criteria before committing to the high cost of translating and filing an application in one or more PCT countries. The USPTO and KIPO are among the national patent offices authorized to conduct PCT searches and examinations.