WIPO, PCT AND INDIA - FUNCTIONING OF THE IPO AS IPEA AND ISA

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With the filing of the 3 millionth international patent application under WIPO’s Patent Cooperation Treaty (PCT) on February 2, 2017, the then WIPO Director General Francis Gurry cantillated that “the PCT’s success is a tribute to the vision of the PCT’s founders who, more than four decades ago, foresaw the value in providing a global service to assist innovators in seeking multinational patent protection for their inventions”.

True to its purpose, the PCT is an international patent law treaty, concluded in 1970 providing a unified procedure for filing patent applications to protect inventions in each of its contracting states. Though a PCT application does not itself result in the grant of an international patent having effect in all the jurisdictions across the globe, it establishes an international filing date in all contracting states. However, the grant of the patent is subject to the national or regional rules and regulations relating to patents of the selected jurisdiction. The PCT procedure essentially leads to a standard national or regional patent application, which may be granted or rejected according to applicable law, in each jurisdiction in which the patent is desired.

The international patent application filed under the PCT is made with a Receiving Office (RO) in one language. A search is performed by an International Searching Authority (ISA), accompanied by a written opinion regarding the patentability of the invention, which is the subject of the application. It is optionally followed by a preliminary examination, performed by an International Preliminary Examining Authority (IPEA). Finally, the relevant national or regional authorities administer matters related to the examination of application (if provided by national law) and issuance of patent.

International Searching Authority (ISA)

Articles 15 to 18 of the PCT provide the statutory basis for operational procedures and conduct of the ISA with respect to the International Search of a patent application filed under the PCT.

Fig. Role of International Searching Authority (ISA)

Upon filing the international patent application, an international search is conducted on the basis of the claims, with due regard to the description and the drawings (if any) to discover relevant prior art for the invention. The international search (IS) is carried out by an International Searching Authority (ISA) for the international patent application filed with a Receiving Office (RO). Each receiving Office (except the International Bureau as receiving office) specifies one or more International Searching Authorities as competent to carry out international searches on international applications filed with it. For some receiving offices, different International Searching Authorities are competent depending on the language in which the international application is filed or, where the international application is filed in a language accepted by the receiving Office but not by the International Searching Authority, translated. In case several International Searching Authorities are specified as competent by the receiving Office, the applicant may choose between them (subject to any such language restriction).

The international search will usually be carried out on the basis of the application containing the correct elements or parts (complete application). In case if the application contains certain incorrect or missing parts, they will not be considered for the purpose of international search. If the International Searching Authority considers that the description, the claims or the drawings fail to comply with the prescribed requirements to such an extent that a meaningful search cannot be carried out, it may declare that it will not establish a search report.

The ISA approves the title and abstract of the application and ensures that the application relates to only one invention or must relate to a group of inventions which are so linked as to form a single general inventive concept. However, the ISA is not required to perform an international search on claims which relate to any of the following subject matter:

  • scientific and mathematical theories,
  • plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,
  • schemes, rules or methods of doing business, performing purely mental acts or playing games,
  • methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
  • mere presentation of information, and
  • computer programs

to the extent that the Authority is not equipped to search prior art concerning such programs. If the International Searching Authority is not required to search any of the claims, it may declare that it will not establish an international search report. However, the lack of an international search report in such a case does not, in itself, have any influence on the validity of the international application.

The international search report contains, among other things, the citation of the documents considered relevant, the classification of the subject matter of the invention and an indication of the fields searched as well as any electronic database searched. Further, the ISA provides a preliminary and nonbinding written opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable.

International Preliminary Examining Authority (IPEA)

The international preliminary examination is an optional part of the processing of an international patent application to obtain a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. It is carried out by an IPEA at the request of the applicant for use before the “elected” Offices. The international preliminary report on patentability gives the applicant the opportunity to evaluate the chances of obtaining patents in elected Offices before incurring the expense and trouble of entering the national phase. Moreover, the result that the national phase in each elected State is normally delayed until the expiration of 30 months from the priority date due to such an examination demand provided that the demand is submitted before the expiration of 19 months from the priority date.

Fig. Stages at which the demand for examination to the IPEA can be made

The aim of the international preliminary examination is not to grant or refuse a patent, but to obtain a preliminary and non-binding opinion as to whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable. A secondary objective is to identify whether there appear to be any defects in the form or contents of the international application, for example with regard to the clarity of the claims, the description and the drawings, or whether the claims are fully supported by the description. The applicant has the right to amend the claims, the description and the drawings before the start of the international preliminary examination and also during the examination, if time permits, until the preparation of the international preliminary report on patentability.

Designated ISAs and IPEAs

Following are the designated ISAs and IPEAs under the PCT System :-

  • Austrian Patent Office
  • Australian Patent Office
  • National Institute of Industrial Property (Brazil)
  • Canadian Intellectual Property Office
  • National Institute of Industrial Property of Chile
  • China National Intellectual Property Administration (CNIPA)
  • Egyptian Patent Office
  • European Patent Office (EPO)
  • Spanish Patent and Trademark Office
  • Finnish Patent and Registration Office (PRH)
  • Israel Patent Office
  • Indian Patent Office
  • Japan Patent Office
  • Korean Intellectual Property Office
  • Intellectual Property Office of the Philippines
  • Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation)
  • Swedish Intellectual Property Office (PRV)
  • Intellectual Property Office of Singapore
  • Turkish Patent and Trademark Office
  • National Intellectual Property Authority, State Enterprise “Ukrainian Intellectual Property Institute (Ukrpatent)”
  • United States Patent and Trademark Office (USPTO)
  • Nordic Patent Institute
  • Visegrad Patent Institute

Indian Patent Office (IPO) as the ISA and the IPEA

On October 15th, 2013, India began working as an International Search Authority (ISA) and an International Preliminary Examining Authority (IPEA). Chapter III (international applications under patent cooperation treaty (PCT)) of the Indian Patent Rules, 2003 deals with the provisions pertaining to IPO working as the ISA and the IPEA. The Patent Office, Delhi branch is designated to perform the functions of the Indian International Searching Authority and the International Preliminary Examining Authority under the PCT in accordance with the agreement between the Indian Patent Office and the International Bureau.

An important advantage of choosing India as the International Search Authority (ISA) or International Preliminary Examination Authority (IPEA) can render the applicant (especially large enterprises other than startups, female individuals, educational institutions and small enterprises) eligible to opt for the early publication and expedited examination of the patent applications.