Which international search authority is right for me?


Maeve O’Flynn and Victoria Barker

Which international search authority is right for me?

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While applicants put a lot of care into drafting a PCT application, the choice of international search authority can be an afterthought. But this choice might have a significant impact on costs and other strategic considerations, as Maeve O’ Flynn and Victoria Barker of Finnegan London explain.

When filing a Patent Cooperation Treaty (PCT) application, applicants must select an international search authority (ISA) to compile the international search report and written opinion. The search report highlights relevant prior art, while the written opinion provides a non-binding opinion on patentability.

This information will likely influence a prosecution strategy in the national and regional phases of the application process. Getting the “right” ISA can be important, but what does “right” mean in this context?

While most receiving offices allow applicants a choice of ISAs, applicants tend to default to their local ISA since that is usually their primary business region, so an early opinion on local patentability issues may be valuable. However, there may be advantages to using a different ISA, depending on the business needs for the application in question.

PCT, ISA, prior art, USPTO, foreign language, invention, EPO, Myriad Genetics, patent prosecution, jurisdiction, diagnosis, application