What is a PCT prior art search report?
Patent examiners review PCT applications in the same way that the USPTO examines utility nonprovisional patent applications. In particular, examiners review PCT claims by searching for relevant prior art to determine novelty, nonobviousness and usefulness (utility). The examiner will then summarize findings in a PCT prior art search report.
Keep in mind that the PCT application serves as a placeholder to reserve international patent rights by delaying foreign filing deadlines. While the PCT application itself will not lead to a granted patent, the PCT claims will be reviewed by a patent examiner. The result of the examiner’s review and search of the prior art will lead to at least one PCT search report. The first report is called an International Search Report (ISR) which is issued as a matter of right in each PCT application.
Who conducts the PCT prior art searches?
When a PCT application is filed, the applicant has a choice in selecting the patent office to search the prior art. The applicant chooses the International Search Authority (ISA) by designating the patent office in the initial PCT request. While PCT applicants typically prefer to select their own country’s patent office as the ISA, if available, they may have other options.
For example, PCT applicants originating from China may typically select CNIPA (formerly SIPO) as the International Search Authority while US applicants might prefer the USPTO. Depending upon the subject matter of the technology, savvy PCT applicants may choose certain search authorities in particular countries that might provide the right combination of thorough prior art searches and more favorable claim rulings.
When can you expect the first PCT search report?
The first prior art search report, called an International Search Report (ISR), is routinely issued in each PCT application. If the USPTO is the ISA doing the prior art search, the goal is to send this first prior art search report by 16 months from the priority date. If the PCT application does not claim priority to any prior-filed application (i.e., PCT application is the first filing), then the USPTO’s goal is to issue the International Search Report within 9 months from the PCT filing date.
How can you take advantage of the PCT search report?
The PCT search report is filled with valuable prior art information that you can use to obtain patents in the US and foreign countries. For example, you can file an amendment in your counterpart US application to amend the US claims to be more unique over the prior art found in the PCT search report. If you do not have a counterpart US application, you can file a US national stage application with amended claims that are more novel over the prior art references.
In other words, the PCT search report gives you an earlier glimpse of the prior art that will be cited against your claims. Armed with this information, you can preempt patent rejections by amending your claims before they are searched by an examiner. Amending your claims earlier can save you an Office Action or two.
How to amend PCT claims
In response to a search report, you can amend the PCT claims by filing an Article 19 amendment or an Article 34 Amendment. The difference between the two is that an Article 19 amendment will not result in a subsequent search report. You can file national stage applications based on Article 19 amended claims, but you might not have any opinions on the allowability of such amended claims.
We generally recommend the Article 34 instead since you will get a follow up search report on the amended claims. The Article 34 amendment will typically cost more due to the government fees for the mandatory Chapter II (“two”) demand which must be filed in conjunction with the amendment.
Another option is to amend claims at the national stages. Many foreign countries have a two-step process for patent examination. First, you start by filing a national stage application. Second, you must request examination by a certain deadline after national stage entry. The later deadline for requesting examination gives applicants time to amend claims before they are examined by the local patent office. You can take that time to amend foreign claims to overcome prior art references cited in the PCT application and in any counterpart cases (e.g., US applications).
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