The International Searching Authority

35 U.S.C. 362

International Searching Authority and International Preliminary Examining

Authority.

(a) The Patent and Trademark Office may act as an International

Searching Authority and International Preliminary Examining Authority with

respect to international applications in accordance with the terms and

conditions of an agreement which may be concluded with the International

Bureau, and may discharge all duties required of such Authorities, including

the collection of handling fees and their transmittal to the International

Bureau.

(b) The handling fee, preliminary examination fee, and any

additional fees due for international preliminary examination shall be paid

within such time as may be fixed by the Director.

37 CFR 1.413 The United States International Searching Authority.

(a) Pursuant to appointment by the Assembly, the United States

Patent and Trademark Office will act as an International Searching Authority

for international applications filed in the United States Receiving Office

and in other Receiving Offices as may be agreed upon by the Director, in

accordance with the agreement between the Patent and Trademark Office and

the International Bureau (

PCT Art. 16(3)(b)

).

(b) The Patent and Trademark Office, when acting as an

International Searching Authority, will be identified by the full title

“United States International Searching Authority” or by the abbreviation

“ISA/US.”

(c) The major functions of the International Searching Authority

include:

(1) Approving or establishing the title and

abstract;

(2) Considering the matter of unity of invention;

(3) Conducting international and international-type

searches and preparing international and international-type search

reports (

PCT Art. 15

,

17

and

18

, and

PCT Rules 25

,

33

to

45

and

47

), and

issuing declarations that no international search report will be

established (

PCT Article

17(2)(a)

);

(4) Preparing written opinions of the International

Searching Authority in accordance with

PCT Rule

43bis

(when

necessary); and

l and international-type

searches and preparing international and international-type search

reports (

PCT Art. 15

,

17

and

18

, and

PCT Rules 25

,

33

to

45

and

47

), and

issuing declarations that no international search report will be

established (

PCT Article

17(2)(a)

);

(4) Preparing written opinions of the International

Searching Authority in accordance with

PCT Rule

43bis

(when

necessary); and

(5) Transmitting the international search report and the

written opinion of the International Searching Authority to the

applicant and the International Bureau.

The United States Patent and Trademark Office (USPTO) agreed to and was

appointed by the PCT Assembly, to act as an International Searching Authority. As such

an Authority, the primary functions are to establish (1) international search reports

and (2) for international applications having an international filing date on or after

January 1, 2004, written opinions. See

PCT Article 16

and

PCT Rule

43bis

.

Pursuant to an agreement concluded with the International Bureau, the

USPTO, as an International Searching Authority, agreed to conduct international searches

and prepare international search reports and written opinions of the International

Searching Authority, for, in addition to the United States of America, Bahrain,

Barbados, Brazil, Chile, Dominican Republic, Egypt, Georgia, Guatemala, India, Israel,

Jordan, Mexico, New Zealand, Oman, Panama, Peru, Philippines, Qatar, Saint Kitts and

Nevis, Saint Lucia, Saint Vincent and the Grenadines, South Africa, Thailand, and

Trinidad and Tobago. The agreement stipulated the English language and specified that

the subject matter to be searched is that which is searched or examined in United States

national applications.

I.

TRANSMITTAL OF THE SEARCH COPY TO THE INTERNATIONAL SEARCHING

AUTHORITY

The “search copy” is transmitted by the Receiving Office to the

International Searching Authority (

PCT Article 12(1)

), the details

of the transmittal are provided in

PCT Rule 23

.

II

language and specified that

the subject matter to be searched is that which is searched or examined in United States

national applications.

I.

TRANSMITTAL OF THE SEARCH COPY TO THE INTERNATIONAL SEARCHING

AUTHORITY

The “search copy” is transmitted by the Receiving Office to the

International Searching Authority (

PCT Article 12(1)

), the details

of the transmittal are provided in

PCT Rule 23

.

II.

THE MAIN PROCEDURAL STEPS IN THE INTERNATIONAL SEARCHING AUTHORITY

The main procedural steps that any international application goes

through in the International Searching Authority are (1) the making of the

international search (

PCT Article 15

), (2) the

preparing of the international search report (

PCT Article 18

and

PCT Rule

43

) and (3) for international applications having an

international filing date on or after January 1, 2004, the preparing of a written

opinion of the International Searching Authority (

PCT Rule

43bis

).

III.

COMPETENT INTERNATIONAL SEARCHING AUTHORITY

In respect of international applications filed with the U.S.

Receiving Office, the United States International Searching Authority is competent

to carry out the international search (

PCT Article 16

,

PCT Rules

35

and

36

,

35 U.S.C. 362

and

37 CFR

1.413

). The European Patent Office (EPO), the Korean

Intellectual Property Office (KIPO), the Australian Patent Office (IP Australia)

(IPAU), the Israel Patent Office (ILPO), the Japan Patent Office (JPO), and the

Intellectual Property Office of Singapore (IPOS) may also be competent to carry out

the international search (

PCT Article 16

,

PCT Rules

35

and

36

) for international

applications filed with the U.S. Receiving Office. The choice of International

Searching Authority (ISA) must be made by the applicant on filing the international

application. See

MPEP

§§ 1840.01

-

1840.07

for further information regarding the competency

of the EPO, KIPO, IPAU, ILPO, JPO, and IPOS as an International Searching Authority

for applications filed by U.S

s

35

and

36

) for international

applications filed with the U.S. Receiving Office. The choice of International

Searching Authority (ISA) must be made by the applicant on filing the international

application. See

MPEP

§§ 1840.01

-

1840.07

for further information regarding the competency

of the EPO, KIPO, IPAU, ILPO, JPO, and IPOS as an International Searching Authority

for applications filed by U.S. nationals or residents in the USPTO or in the

International Bureau (IB) as receiving Office.

The international search fee for the selected ISA must

be paid to the USPTO as a receiving Office within one month from the time of receipt

of the international application. The search fee amounts for the competent

International Searching Authorities are found in each weekly edition of the

Official Gazette

in United States dollars. The search fee

will change as costs and exchange rates require. If exchange rates fluctuate

significantly, the fee may change frequently. Notice of changes will be published in

the

Official Gazette

shortly before the effective date of any

change.

If the selected ISA considers that the international

application does not comply with the requirement of unity of invention as set forth

in

PCT Rule

13

, the ISA may invite applicants to timely pay directly to

it an additional search fee in the currency accepted by the ISA for each additional

invention.