The Patent Cooperation Treaty (PCT) is an international agreement that is administered by the World Intellectual Property Office (WIPO) with the aim of streamlining the securing of patents in multiple jurisdictions. The patent offices of approximately 150 countries and multi-country regions, participate in the running of the PCT, including the Australian Patent Office (IP Australia) the European Patent Office, the US Patent and Trademark Office, The Chinese Intellectual Property Office, and the Japanese and Korean Patent Offices.
One of the features of the PCT is that after lodging an international patent application with the Applicant’s “Receiving Office” (usually the Patent Office in which the Applicant resides) the Applicant then receives an international search report (ISR), and written opinion on patentability (WO). Most commonly the Receiving Office (RO), the International Search Authority (ISA) and the International Preliminary Examining Authority (IPEA) are a department (or departments) of the Applicant’s local Patent Office and so the ISR and WO issue from the same Patent Office. However, depending on the Receiving Office that the international application is filed with, it may be possible for the Applicant to choose between a number of ISA’s. Some example RO’s and their competent ISAs and IPEAs are set out in the table below:
|Jurisdiction||Competent ISAs and IPEAs|
|US Patent and Trademark Office||Australian Patent Office, European Patent Office, Federal Service for Intellectual Property (Rospatent) (Russian Federation), Intellectual Property Office of Singapore, Israel Patent Office, Japan Patent Office (JPO), Korean Intellectual Property Office, US Patent and Trademark Office|
|New Zealand||Australian Patent Office, European Patent Office, Korean Intellectual Property Office or United States Patent and Trademark Office|
|Australia||Australian Patent Office, South Korean Patent Office.|
|Republic of Korea (South Korea)||Australian Patent Office, Austrian Patent Office, Intellectual Property Office of Singapore, Japan Patent Office (JPO)4 or Korean Intellectual Property Office|
As shown in the table above, Australian applicants have the choice, at the time of lodging their PCT application, of choosing either the Australian Patent Office, or the Republic of Korea (South Korea) Patent Office as their ISA and IPEA.
Considerations when nominating the Korean International Search Authority (KR-ISA)
In our opinion there can be advantages for an Australian applicant to nominate the KR-ISA, particularly if the international application concerns electronics, software or IT related inventions. The Australian Patent Office, has a history of taking action in the Australian courts to quash patents for certain types of IT/Software subject matter. In a similar vein, the AU-ISA, sometimes makes “certain observations” in the WO in respect of IT/Software related international patent applications that emphasise that the claimed invention would not be patent eligible subject matter in Australia. Our experience is that the KR-ISA does not generally make such observations. Such observations may be unhelpful to the applicant during subsequent examination in the national phase of other countries. Particularly when it is borne in mind that the Applicant may have no intention of entering the Australian national phase and other countries may not have the same position to IT/Software patent applications as that of the Australian Patent Office.
Cost is also a factor. The cost for having the international type search performed by the Korean Patent Office on an English language patent specification is KRW 1,200,000 (about AU$1,414). In contrast, the cost for having the international type search performed by the Australian Patent Office is about 56% greater, being AU$2,200.
Some points to note when considering nominating the South Korean Patent Office (KR) as the ISA and IPE
- In addition to citing English language prior art, the KR-ISA tends to cite more Japanese, Korean and Chinese prior art documents. On the plus side, that helps the Applicant to gain a broader picture of the state of the art. However, it also means that there may be a need to have translations made more citations than would be the case if the AU ISA performed the search. The KR ISA does not charge for making the citations available. In contrast IP Australia charges AU$50/document.
- Under KR patent practice multiply dependent claims cannot depend from earlier multiply dependent claims. In contrast, claim sets that are drafted in Australia, (and similarly for example, for the EPO and Canada) allow the inclusion of “multiple-multiple” claims. Therefore it is preferable, when filing the a PCT application nominating the KR-ISA, to lodge a letter requesting the KR/ISA to search all of the claims that are lodged as otherwise only claims that are not multiple-multiple dependent claims may be searched and made the subject of the WO.
- If, subsequent to the issuance of the ISA and WO, the Applicant decides to lodge a Demand for Preliminary Examination to address issues raised in the WO, then the procedure for paying the Official Fee to KIPO is set out here: http://www.pctkorea.com/pctService/pctFeesPayment at the time of writing the official fee for a Demand with the KR IPEA was KRW 703000 (about AU$828). The fee for a Demand with AU IPEA was a little higher AU$870.
In conclusion, Australian PCT applicants have the option of nominating either the Australian Patent Office or the South Korean Patent Office as their ISA and IPEA. Depending on the subject matter of the international patent application and cost sensitivity there may be advantages in making a conscious decision as to which of the two available Offices to use for search and preliminary examination. Our attorneys can advise in more detail on a case-by-case basis.