What is an International Search Authority?
An International Search Authority (ISA) is a patent office that you choose to search for prior art relevant to your PCT application. The ISA will provide an International Search Report (ISR) detailing the results of their prior art search, which typically includes a list of prior art references and summaries of how certain prior art references apply to the claims in your PCT application.
Most US applicants will likely file their PCT applications with the USPTO as the receiving office (RO). The ISA options below are available when the USPTO is the Receiving Office.
The following ISA options are sorted by cost from highest to lowest for small entity applicants:
- European Patent Office (EPO)
- Australian Patent Office (IPAU)
- Intellectual Property Office of Singapore (IPOS)
- Japan Patent Office (JPO)
- Israel Patent Office (ILPO)
- US Patent and Trademark Office (USPTO)
- Korean Intellectual Property Office (KIPO)
- Russian Federal Service for Intellectual Property (Rospatent)
Which ISA is cheaper?
Note that the above list is sorted is descending order with the EPO being the most expensive ISA for a small entity at roughly $1,000 more than the USPTO. The USPTO is the only ISA where government fees for a large entity (e.g., company with more than 500 employees) are twice as much as those for a small entity. So for large entity clients, the USPTO would actually be the most expensive ISA. All other ISAs above have only one price regardless of applicant’s size.
The Russian IP Office, known as Rospatent, is the cheapest at $543 (as of the date of this post). Current government fees for ISAs can be found here.
How do you select an International Search Authority?
Choosing the right ISA will depend on which factors are more important to you. For those who seek the least expensive option, the Russian Federation would make sense.
For multiple embodiments that may be subject to a lack of unity of invention, which is akin to a Restriction Requirement in the US, Korea may be less expensive for reviewing multiple inventions.
Costs might not be your most important factor. Perhaps, you care more about having a thorough prior art search so that in order to obtain stronger claims that can withstand an invalidity challenge.
Which ISA is considered more competent or higher quality?
There is a perception that higher costs mean higher quality. While that may be debatable for large entity applicants selecting the USPTO, the EPO maintains a reputation of providing high quality prior art searches. If you choose the European Patent Office as your ISA, you can generally count on EPO examiners to find more relevant prior art. You should also expect more claim rejections in view of a tougher examination.
Which ISA can save time and money in the long run?
Why would PCT applicants choose a more expensive ISA such as the EPO that will lead to a tougher examination? It would seem counterintuitive to pick the ISA option with higher costs and greater probability of claim rejections.
One solid reason for choosing the EPO is if you eventually plan on nationalizing your PCT in Europe. A favorable PCT search report by the EPO during the PCT phase (i.e., Chapter I or II) may lead to a smoother examination when you enter the national phase in Europe. In the long run, you may save time and money by dealing with fewer EPO rejections (aka “Official Actions” or “Communications”).
Similarly, a favorable PCT search report by the USPTO during the Chapter II phase can lead to expedited examination of a US national stage application under 37 CFR § 1.496.
Which strategy makes sense for picking an ISA?
If you have some inkling of the foreign countries in which you will want patent protection, one effective ISA strategy is work backwards. Consider which ISA will provide the most cost savings or the more thorough prior art search, if that is important.
If your main goal with a PCT application is to buy time by deferring deadlines, the Russian Federation offers the lowest cost.
Which International Search Authorities do US applicants pick?
According to the WIPO IP statistics data center, PCT applicants that filed with the US Receiving Office picked the following top four ISAs from 2020 to 2021:
- European Patent Office: 40.6%
- USPTO: 40.2%
- Korea: 14.1%
- Russian Federation: 4%
