New PCT Supplementary Search

Charles Clark (no, not that one) has emailed the IPKat to inform him that WIPO has recently announced, in the December PCT Newsletter, that a new search service is due to be launched as from 1 January 2009.  This will be known as the Supplementary International Search, under new Rule 45bis PCT (hidden deep inside this pdf document).  The point of this, so WIPO says, is to allow applicants to have their international patent application more comprehensively searched in languages other than that in which the ISR is carried out.  When this service comes in, the languages that will also be searched, courtesy of the Nordic, Russian or Swedish searching authorities will include Russian, Swedish, Norwegian, Icelandic and Danish. 

Of course, all this extra searching will not be free of charge.  A supplementary search fee (payable to the IB, naturally) will cost the applicant between 455 and 2,826 Swiss Francs, depending on which institute is selected.  The applicant must also request any search no later than 19 months after the earliest priority date, but this should (in theory at least) allow the results to come in before a decision needs to be made on what to do in the national phase (at 30/31 months).  

The IPKat can see how this would be a good idea, but only for a very limited selection of applicants and if there is a concern that there might be killer prior art lurking somewhere in one of these languages that has not been translated into a more commonly searched language.  It might, however, become much more useful for applicants once Japan and China join the party, which seem to be the most obvious next candidates.  
New PCT Supplementary Search New PCT Supplementary Search Reviewed by David Pearce on Thursday, December 18, 2008 Rating: 5


  1. Am not sure Japan and China will be joining the party soon, as I hazard a guess that unearthing prior art in the two languages, more than the other languages, is probably the major reason for the supplementary search.

  2. This presaging Powerpoint presentation from a few months back suggests that you shouldn't hold your breath for Japan or the US to join the party. China's a possibility, though.

    What's interesting to me is that the EPO are looking to join in in 2010. Not very useful for Europeans, but possibly a big deal for US applicants with an interest in the EP who could get a US and an EPO search at the same time. Waits to be seen whether the EPO will offer any search fee reduction on entry into the European phase - I'm not hopeful.

  3. The JPO is not opposed to the SISR system, but will not participate. First of all, it takes the view that the ISA should be encouraged to do good job in the first place. Secondly, it is afraid that it would be inundated with SIS requests.


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