Who can file a PCT application?
Before delving into the details of PCT Receiving Offices (RO) and International Search Authorities (ISA), we should start with a foundational issue of who can file an international PCT application. To file a PCT application, at least one of the applicants must be a national or resident of a PCT member country. The nationality of the applicant will then determine the eligibility of particular Receiving Offices and International Search Authorities. Now, let’s consider the options for the PCT RO and ISA.
What is a PCT Receiving Office?
Suppose you have determined that at least one applicant is a national or resident of a PCT member country, does that automatically mean that you can file the PCT application with any Receiving Office (e.g., USPTO)?
No, the PCT application must be filed in a RO where the PCT-eligible applicant is qualified to file.
How do you pick an appropriate Receiving Office?
In order to file a PCT application designating the US Receiving Office (RO/US), for example, at least one of the applicants must be a US national or resident. A US national can be a company incorporated in the US. A US resident can be a business with a real and effective industrial or commercial establishment in a Contracting State [see PCT Rule 18.1].
If a PCT application is filed in an improper Receiving Office (i.e., located in a country in which no applicant is a resident or national), the international application will be transmitted to the International Bureau (RO/IB), which is a part of the World Intellectual Property Organization (WIPO).
What is an International Search Authority (ISA)?
An ISA is the patent office that will review your PCT application and issue a report on the patentability of the claims. Similar to how a patent examiner would review the claims of a utility patent application and search the prior art, the ISA will conduct a prior art search and issue a report called the International Search Report (ISR) and Written Opinion (W/O).
How to select competent ISA
Except for the International Bureau, each Receiving Office has its own list of competent International Search Authorities. For the US Receiving Office, a PCT applicant may select any of the following IP offices as an ISA [see MPEP 1840]:
- USPTO
- European Patent Office (EPO)
- Korea Intellectual Property Office (KIPO)
- Australian Patent Office (IP Australia)
- Russian Federation (Rospatent)
- Israel Patent Office (ILPO)
- Japan (JPO)
- Singapore (IPOS)
If the IB is the Receiving Office, then the eligible ISA will depend upon the nationality of the applicant(s) [See Annex C of the PCT Applicant’s Guide]. For example, if a PCT application by a single Japanese applicant is filed with the RO/IB, the available ISA offices would be the JPO, EPO and the IP Office of Singapore.
Can Taiwan applicants file PCT applications?
Yes and no.
No, if all the applicants (e.g., inventors) are nationals of Taiwan only since there would be no competent Receiving Office.
Yes, if at least one co-applicant is a national or resident of a PCT member country.
For example, if the patent application had at least one US co-inventor or if a portion of a patent application is assigned to a US company, then a PCT application may be filed with the US Receiving Office.
