October 20, 2014

Israeli Patent Office to Function as International Searching & Examining Authority for US-PCT Applications as of 1 October 2014

Dr. Ilan Cohn, Senior Partner
Dr. Ilan Cohn

Senior Partner

Reinhold Cohn & Partners

Under a newly signed agreement between the U.S. Patent and Trademark Office (USPTO) and the Israeli Patent Authority (IPA), as of 1 October, 2014, the IPA will function as an International Searching & Examining Authority (ISEA) for PCT applications filed at the USPTO.

Under this agreement, an applicant filing a PCT application at the USPTO will have the option to choose the IPA as the ISEA for its PCT application. This reflects recognition by the USPTO of the quality of the search and examination conducted by the IPA. The IPA was first recognized as an ISEA in 2012, but until now served in this capacity only with respect to PCT applications filed at the IPA, functioning as a PCT Receiving Office.

This is the first instance where the IPA will begin to function as an ISEA for a foreign country. It is to be noted that this will not apply to patent applications, by US applicants, filed with the International Bureau.

Under the agreement, the IPA will limit its availability to act as an ISEA for US-PCT applications, to 75 applications per quarter1. Moreover, the IPA will not function as an ISEA for applications including one or more claims directed to business methods, classified under G06Q in the International Patent Classification.

Patent applications that are examined and receive a favorable examination result from the IPA will enjoy all the benefits under the Patent Prosecution Highway (PPH) agreement between the USPTO and the IPA; namely, favorable opinion on examination of at least one claim will enable acceleration of counterpart national applications in the USA and Israel.

The IPA has been added to a reputable list of Patent Offices (including the USPTO, the EPO, Japanese Patent Office, Korean Patent Office, Russian Patent Office and Australian Patent Office), from which US applicants may choose an ISEA.

1 This is likely for the reason that the IPA, which is a small office, does not wish to be overwhelmed with a flood of applications that will have to be searched within a short time period.  

This article is provided for general information only. It is not intended as legal advice or opinion and cannot be relied upon as such. Advice on specific matters may be provided by our group’s attorneys.

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