Will you get a prior art search in your PCT patent application?

Yes, a prior art patent search is typically made in each PCT application. The results of this PCT international search are summarized in an initial document called an International Search Report (ISR). This first prior art search, also known as the “main international search” is automatic in nearly every PCT application. An applicant need not request a main international search.

When will a prior art search occur in a PCT application?

The goal is to send the International Search Report by 16 months from the priority date or 9 months if no priority claim is made according to MPEP § 1843.05. If both US nonprovisional and PCT applications have been filed, there is a good likelihood that a prior art search may occur first in the PCT application.

What types of prior art will be searched in the PCT application?

It’s called an international search for a reason. The PCT patent examiner from the designated International Search Authority (ISA) will search internationally for prior art references. Therefore, it is common to see prior art from around the world. Most prior art references constitute granted patents or published patent applications.

How to take advantage of PCT prior art search

One way to speed up a US patent is to reduce the number of patent rejections, known as Office Actions. But how do you avoid claim rejections if you have not yet seen the Office Action? Aside from your own patentability search, you can take advantage of the PCT prior art search assuming it arrives before the first Office Action in your US application.

The International Search Report will identify relevant prior art and indicate which claims are allowable or not over those prior art references. Knowledge truly is power in this situation. Armed with this prior art and claim information, you can make appropriate claim amendments in your US application. Hopefully, you will have time to file a Preliminary Amendment before the first Office Action on the merits is issued.

How to piggyback off allowed PCT claims

You may take it a step further by seeking to duplicate any PCT claim allowances in your US application. The tool to streamline this claim allowance is called Patent Prosecution Highway (PPH). Before PPH is eligible, you first need to get your PCT claims allowed. If the International Search Report does not indicate any favorable opinions on your PCT claims, you may need to amend your PCT claims. You can then request a second review of your amended claims by filing a Chapter II (“chapter two”) Demand.

How to use PCT prior art search to streamline national stages

The above principle of amending claims before examination can also apply to national stage filings. Many PCT member countries also participate in PPH. Even if PPH is unavailable, the goal is to get the PCT claims in an optimal condition before entering national stages. That way, you can hopefully reduce the rejections by each foreign patent office.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com