Patent Cooperation Treaty (PCT)- PCT Search, Written Opinion, & Publication Practice

1. June 2015
Patent Cooperation Treaty
(PCT) Search & Publication

2. PCT Search & Publication

3. PCT Timetable
PCT Timetable
Months from Earliest
Priority Date Deadline/Action
16th Month International Searching Authority (ISA) Prepares International Search Report (ISR) and Written
Opinion (WO)- This should occur 2 months before publication, but usually, the ISR is not mailed until
after initial publication of the application.
What you need to do- Nothing at this point until you receive a copy of the Search Report
18th Month Publication of the Application- Within 2 weeks of this deadline, normally receive a Notice of Publication
(IB/311). “WO” indicates that it is a PCT publication, as opposed to a particular country. The WO is
followed by the year, a slash “/”, and a sequential number. The A1, A2, A3, etc. after the publication
number indicates what type of publication. For example, A1 means “Patent Application Publication”; A2
means “Patent Application Republication”; and A9 means “Patent Application Publication (Corrected
Publication).”
18th Month- Earlier or
Later
Receipt of International Search Report (ISR) and Written Opinion (WO)- Under the new PCT
practice, the Search Report and Written Opinion will be typically issued before publication (but not
always). The ISR is published with the application publication or republished later (A2) if the search was
not finished by the publication date. The WO is not published.
What you need to do- (1) Report ISR/WO to client; (2) If U.S. counterpart case exists, file IDS for search
results; and (3) If foreign counterpart case(s) exist (unlikely), send search results to foreign associate.

4. PCT Search (ISA)
• Search & Examination based generally on
the following:
– Novelty- similar to (but not the same as) the
anticipation standard in the U.S. (absolute
novelty and no grace period)
– Inventive Step- similar to (but not the same as)
as the nonobviousness requirement in the U.S.
– Industrial applicability- it can be made or used
(in the technological sense) in any kind of
industry. Usually, it does not include business
methods.

5. PCT Search/Examination Pointers
• Unity of Invention- although similar, not the
same standard as in U.S. restriction practice.
– If you want to search for other claimed
inventions you will need to pay additional
search fees.
– Even if you pay additional search fees, you will
then need to pay examination fees to have the
additionally searched claims examined.
– Not paying search fees may limit the claims
you can initially nationalize.
• Generally speaking, search and examination
fees are a waste of money.
– But in view of recent EPO rules you might want
to consider paying the fees if you are going to
nationalize in Europe

6. PCT Search (ISA)- Typical Flow
Int’l Bureau (IB)
PCT
Application
Searching
Authority (ISA)
ISA Written
Opinion (WO)
Int’l Search
Report (ISR)

7. PCT Search (ISA)- Typical Flow
Int’l Bureau (IB) PCT
Application
Int’l Search
Report (ISR)

8. Need More Information?
Please Contact:
Chuck Schmal (cschmal@uspatent.com)
Woodard, Emhardt, Moriarty, McNett & Henry LLP
111 Monument Circle, Suite 3700
Indianapolis, IN 46204
(317) 634-3456
www.uspatent.com

9. June 2015
Patent Cooperation Treaty
(PCT) Search & Publication