June 2015

Patent Cooperation Treaty (PCT) Search & Publication

PCT Search & Publication

PCT TimetablePCT Timetable

Months from Earliest Priority Date Deadline/Action

16th Month International Searching Authority (ISA) Prepares International Search Report (ISR) and Written Opinion (WO)- This should occur 2 months before publication, but usually, the ISR is not mailed until after initial publication of the application.What you need to do- Nothing at this point until you receive a copy of the Search Report

18th Month Publication of the Application- Within 2 weeks of this deadline, normally receive a Notice of Publication (IB/311). “WO” indicates that it is a PCT publication, as opposed to a particular country. The WO is followed by the year, a slash “/”, and a sequential number. The A1, A2, A3, etc. after the publication number indicates what type of publication. For example, A1 means “Patent Application Publication”; A2 means “Patent Application Republication”; and A9 means “Patent Application Publication (Corrected Publication).”

18th Month- Earlier or Later

Receipt of International Search Report (ISR) and Written Opinion (WO)- Under the new PCT practice, the Search Report and Written Opinion will be typically issued before publication (but not always). The ISR is published with the application publication or republished later (A2) if the search was not finished by the publication date. The WO is not published.What you need to do- (1) Report ISR/WO to client; (2) If U.S. counterpart case exists, file IDS for search results; and (3) If foreign counterpart case(s) exist (unlikely), send search results to foreign associate.

PCT Search (ISA)• Search & Examination based generally on

the following:– Novelty- similar to (but not the same as) the

anticipation standard in the U.S. (absolute novelty and no grace period)

– Inventive Step- similar to (but not the same as) as the nonobviousness requirement in the U.S.

– Industrial applicability- it can be made or used (in the technological sense) in any kind of industry. Usually, it does not include business methods.

PCT Search/Examination Pointers• Unity of Invention- although similar, not the

same standard as in U.S. restriction practice.– If you want to search for other claimed

inventions you will need to pay additional search fees.

– Even if you pay additional search fees, you will then need to pay examination fees to have the additionally searched claims examined.

– Not paying search fees may limit the claims you can initially nationalize.

• Generally speaking, search and examination fees are a waste of money.

– But in view of recent EPO rules you might want to consider paying the fees if you are going to nationalize in Europe

PCT Search (ISA)- Typical Flow

Int’l Bureau (IB)

PCT Application

Searching Authority (ISA)

ISA WrittenOpinion (WO)

Int’l Search Report (ISR)

Not Public

AROUND16-18 MONTHS

PCT Search (ISA)- Typical Flow

Int’l Bureau (IB) PCT Application

Int’l Search Report (ISR)

PUBLISHED AT 18 MONTHS

Need More Information?

Please Contact:

Chuck Schmal (cschmal@uspatent.com)

Woodard, Emhardt, Moriarty, McNett & Henry LLP111 Monument Circle, Suite 3700

Indianapolis, IN 46204(317) 634-3456

www.uspatent.com

June 2015

Patent Cooperation Treaty (PCT) Search & Publication