PCT Practical Advice – Oct 21 – Selecting an ISA

General principles

• Each RO specifies one or more ISAs and IPEAs as competent on PCT applications
  filed with it – R.35, AG Annex C
• Where several ISAs/IPEAs are competent, applicant may choose using Box IV of Request form – R.4.14bis
• If applicant files at IB, choice of ISA’s and IPEA’s is same as if applicant had filed at at a RO competent to handle an application from one of applicants based on residency or nationality – R.35.3

Factors to take into account when selecting an ISA (and IPEA)

1. Different ISA’s / IPEA’s may be available depending on where application is filed
   – More than one RO may be competent to handle PCT filing based on residences and nationalities of all applicants. But, after filing at a competent RO, ISA choices are fixed by RO – R.35, AG Annex C.
   – Some ISA’s may limit number of searches they perform for certain RO’s. For example, AU and IL have limited numbers for filings at US = RO – AG Annex C.
   – In addition, some IPEA’s will only examine applications searched by specified ISA’s, possibly limiting choices if a demand (Chapter II) is to be filed.
   – In addition, SISA’s will only perform a Supplementary Search if they have NOT already acted as ISA. Current SISA’s are: AT, EP, FI, RU, SE, SG, TR, UA, XN and XV.
2. Languages accepted by ISA for search
   – Each ISA limits languages that it will accept for search. In some cases, a translation must be filed for search – R. 12.3, AG Annex D
3. Search fees charged by ISA
   – Each ISA determines fees it charges for search and non-unity. Some ISA’s offer reductions for SME’s and applicants from low- or middle-income economies – AG Annex D. 
   – Some DO/EO’s may also provide fee reductions after national entry if certain ISA’s have been used – AG National Chapter.
4. Quality and timeliness of the ISR and Written Opinion
   – ISR and WO-ISA are used by applicants to decide on whether to pursue application, and where to enter national phase.
   – National entry time limits are fixed and are not extended if ISR and WO-ISA are very late. WIPO collects data and reports on quality and timeliness.
5. Not all subject matter is searched by all ISA’s
   – Each ISA can exclude certain subject matter from search – PCT R. 39(i)-(vi), Annex D.
   – Subject matters searched by ISA are usually same as they search in national procedures.
6. It may be advantageous if ISA has already searched one or more priority applications
   – In such cases, ISR and WO-ISA may be available quicker and/or a discount is provided.
   – Some ISA’s (such as EP, ES, FI and IL) allow applicants to file a PCT-Direct letter to submit informal comments about objections raised in search of priority applications.
7. ISA’s search in their national prior art databases
   – Although PCT requires a minimum standard for ISA’s, each ISA will have different full text documents available, and each office will have search examiners who can handle these languages.
   – If critical prior art is expected in certain languages, it may be advantageous to arrange a search in that language (if possible).
8. Use of ISR and WO as PPH work product
   – Many offices participate in one or more PCT-Patent Prosecution Highway agreements, allowing an ISR and WO-ISA to be used in one or more national phases to accelerate processing after national entry. 

Sources: most of this info is from PCT Newsletter Oct (#10) 2021. Every month, WIPO publishes a PCT Newsletter with important updates and practical advice – subscribe here.