In our previous blog post on this IP International Law series, we analyzed the international procedure for obtaining a patent under the Patent Cooperation Treaty (the PCT from now on). At IP Consultores, through this series, our primary goal is for people to know some basic Intellectual Property concepts to understand Intellectual Property Systems better.
According to the WIPO, this procedure may split into two broad phases: 1) the international and 2) the national. Within the international phase, there are five stages: 1) filing an international application, 2) international search, 3) international publication, 4) supplementary international search, and 5) international preliminary examination. The three firsts are obligatory, while the other two are optional.
When someone has filled out an international patent application before any Receiving Office, the next stage is sending this application to another authority for an international search. We will now analyze this second international patent prosecution procedure stage.
The International Search
According to Article 15 (1), all the international applications prosecuted under the PCT “shall be the subject of international search.” The objective of the international search is “to discover relevant prior art” following Article 15 (2).
It is essential to remind that an international patent application must contain the following elements: 1) a request, 2) a description, 3) one or more claims, 4) one or more drawings, and 5) an abstract. Then, when the PCT states that the objective of the international search is “to discover relevant prior art,” it is possible to recognize that all research projects -as such any patent project is- must begin considering the prior art related to the invention’s field.
The International Searching Authority
When an applicant files an international patent application, the Receiving Office has to review that the application fulfills the requirements according to the PCT and its Regulations. The Receiving Office must send two different copies of the international application: 1) the “record copy” to WIPO’s International Bureau and 2) the “search copy” to the competent International Searching Authority.
By Article 15 (5) (c), the International Searching Authority (ISA from now on) is in charge of carrying out the international search. The ISA “shall endeavor to discover as much of the relevant prior art as its facilities permit,” according to Article 15 (4). Regarding the language of the international search, by article 15 (5) (c), the applicant must prepare a translation of the “search copy” in any language prescribed for international applications.
Following Article 16 (2), each Receiving Office must specify the ISA “competent for the searching of international applications filed with such Office.” Moreover, Article 16 (1) states that an ISA “may be either a national Office or an intergovernmental organization, such as the International Patent Institute.” Furthermore, Article 16 (1) sets out the International Patent Institute, whose tasks are “establishing documentary search reports on prior art with respect to inventions which are the subject of applications.”
It is essential to highlight that -by Article 17 (1)- the applicable provisions about the procedure followed before the ISA are: 1) the PCT, 2) the Regulations, and 3) the Agreement which the International Bureau shall conclude […] with the ISA. According to Article 19 (1), the patent applicant has the right “to amend the claims of the international application […] within the prescribed time limit.” These amendments must present before the International Bureau “after receiving the international search report.”
The International Search Report
Article 18 (1) states that the International Search Report “shall be established within the prescribed time limit and in the prescribed form.” Once the ISA has established the ISR, the Authority will transmit it to the applicant and the International Bureau following Article 18 (2).
The ISA “may declare […] that no international search report will be established” according to Article 17 (2) (a) in two cases: 1) when “the international application relates to a subject matter which the ISA is not required […] to search” and 2) when the description, the claims, or the drawings “fail to comply with the prescribed requirements.”
Regarding this last issue, Article 17 (2) paragraph (b) states that when any of the two cases are linked “with certain claims only, the international search report shall so indicate in respect of such claims” while the other claims “the said report shall be established as provided in Article 18.”
The International Search Report or “the declaration referred to in Article 17 (2) (a) shall be translated as provided in the Regulations.” The WIPO’s International Bureau will oversee those translations by Article 18 (3).
Additional fees
The ISA “shall invite the applicant to pay additional fees” when it “considers that the international application does not comply with the requirement of unity of invention” according to Article 17 (3) (a). Further, the applicant must pay a separate fee to the national Office of any designated State to avoid withdrawing those parts of the international application when the applicant has not paid all additional fees required by the ISA.
We at IP Consultores have already analyzed through this blog post series the two first obligatory stages of the international patent prosecution procedure: 1) the filing of the international patent application and 2) the international search. In our next blog post, we will analyze the obligatory third stage within the international phase of the PCT’s procedure: the international publication.
*** This post series does not constitute legal advice. Instead, it only pretends to contribute to understanding the central concepts of International Patent Law. Please contact us for legal advice on this or any related topic.
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