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.
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, for example, a PCT applicant may select any of the following IP offices as an ISA: 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) [See MPEP 1840].
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.
Latest posts by Vic Lin (see all)
- Why founders should search trademarks before incorporation - January 8, 2019
- Patenting for startups: Where to begin - January 4, 2019
- When should a startup file a trademark application? - January 3, 2019