WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Competent International Searching and Preliminary Examining Authorities

Q: I recently filed an international application with the International Bureau as receiving Office on behalf of an applicant who is a national and resident of Switzerland. I have just requested the addition of a second applicant to the application under PCT Rule 92bis. This co-applicant is resident in Switzerland but is a national of the Russian Federation. Upon filing, the only International Searching Authority that was competent to act as such was the European Patent Office. Since the new applicant is a national of the Russian Federation, is it possible to request the Federal Service for Intellectual Property (Rospatent) (Russian Federation) to carry out the international search if the international search has not yet started at the European Patent Office?

A: It is recalled that where an international application is filed with the International Bureau as receiving Office (RO/IB), the competent International Searching Authority (ISA) (or Authorities, as the case may be) is/are, in accordance with PCT Rule 35.3, that (or those) which would have been competent if the international application had been filed with the national Office of, or acting for, a Contracting State of which the applicant is a resident or national. As you know, in your case, as the applicant at the time of filing the international application was a sole applicant who is a national and resident of Switzerland, the competent receiving Offices for the application are, in addition to the RO/IB, the Swiss Federal Institute of Intellectual Property or the European Patent Office (EPO), and the competent ISA is therefore the EPO. (For information on competent ISAs, please refer to the PCT Applicant's Guide, Annex C in respect of the receiving Office concerned.)

Usually, one advantage of filing an international application with RO/IB is that, if the State of residence of the applicant is different from his/her State of nationality, or if there are two or more applicants who are residents and/or nationals of different States, this may, on the basis of PCT Rules 35.3 and 59.1(b), result in a wider choice of ISAs and IPEAs than would be the case when filing with a competent national or regional patent Office as receiving Office. In your case, if both applicants had been included in the international application upon filing, you would have had the choice of the EPO or Rospatent, based on the applicants' Swiss and Russian nationalities, respectively. However, as the Russian applicant was added after the application was filed, it is not possible to subsequently request Rospatent to carry out the international search (even if the search has not yet started) as it is the situation at the time of filing the international application that is taken into account when determining the competent ISA.

It is recalled that, where the international application is filed with RO/IB, the competent International Preliminary Examining Authority (IPEA) (or Authorities) is/are, according to PCT Rule 59.1(b), also that (or those) which would have been competent if the international application had been filed with the national Office of, or acting for, a Contracting State of which the applicant is a resident or national. If you are considering filing a demand for international preliminary examination in respect of the international application, please note that, even though the second applicant was added to the application presumably before the demand is filed, the only competent IPEA would be the EPO for it is also the situation at the time of filing the international application that is taken into account when determining the competent IPEA.

If you would still like to have a search carried out by Rospatent (for example, if you wish to have a search carried out on documentation in Russian) you can also, in accordance with PCT Rule 45bis.1, request a supplementary international search (SIS) of the international application by Rospatent. The SIS would be in addition to the main international search by the EPO and would incur extra fees. The authority specified for SIS (SISA) would issue a supplementary international search report1, but would not issue a written opinion. Any applicant is entitled to request SIS with any of the Offices that offer this service2 (other than the Office that performed the initial international search), regardless of the Office with which the international application was filed, at any time prior to the expiration of 22 months from the priority date. Requests for SIS should be made using Form PCT/IB/375, which is available at: www.wipo.int/pct/en/forms/index.html and can also be uploaded in ePCT using the corresponding Upload Documents Action. Further information on SIS is available in the PCT Applicant's Guide, Introduction to the International Phase, Chapter 8 at:

/pct/guide/en/gdvol1/pdf/gdvol1.pdf

  1. Note that if the International Searching Authority has made a declaration referred to in Article 17(2)(a) that it will not carry out the international search, or if the SISA finds that carrying out the SIS is entirely excluded by a limitation or condition set out in the applicable agreement under PCT Article 16(3)(b), the SISA may decide not to establish a supplementary international search report (PCT Rule 45bis.5(e)).
  2. Supplementary international searches are also carried out by the Austrian Patent Office, the European Patent Office, the Finnish Patent and Registration Office, the Swedish Patent and Registration Office, the Intellectual Property Office of Singapore, the Turkish Patent and Trademark Office, the Ministry of Economic Development and Trade of Ukraine, Department for Intellectual Property, the Nordic Patent Institute and the Visegrad Patent Institute.