Anyone, who has ever filed an international PCT application, has encountered such a concept as an international search authority. Many people have never thought about what kind of organization it was and what its function was.
In accordance with the approved provisions, the International Search Authority performs the following functions, when considering the international PCT application:
- carrying out an international search,
- preparing an international search report,
- composing a written message.
The International Search Authority may be either a national Office or an intergovernmental organization, such as the International Patent Institute, whose task is to prepare the documented search reports to determine the state of the art in respect to the inventions claimed in the international PCT application.
Currently, within the framework of the Patent Cooperation Treaty, 23 patent organizations are appointed as the international search authorities:
- the Austrian Patent Office;
- the Australian Patent Office;
- the National Institute of Industrial Property of Brazil;
- the Canadian Intellectual Property Office;
- the National Institute of Industrial Property of Chile;
- the China National Intellectual Property Administration;
- the Egyptian Patent Office;
- the European Patent Office;
- the Spanish Patent and Trademark Office;
- the Finnish Patent Office;
- the Israel Patent Office;
- the Indian Patent Office;
- the Japanese Patent Office;
- the Korean Intellectual Property Office;
- the Intellectual Property Office of the Philippines;
- the Russian Patent Office;
- the Swedish Intellectual Property Office;
- the Intellectual Property Office of Singapore;
- the Turkish Patent and Trademark Office;
- the State Intellectual Property Service of the Ukraine;
- the United States Patent and Trademark Office;
- the Nordic Patent Institute;
- the Visegrad Patent Institute.
Each Receiving Office (with the exception of the International Bureau acting as a Receiving Office) shall appoint one or more International Search Authorities as the competent ones to carry out the international search for the international PCT applications being filed to this Office. Each International Search Authority shall establish the language in which it considers the claimed invention. If the language of filing differs from the language, in which the competent search authority considers the international PCT application, it is necessary, in addition to the application materials, to submit its translation into the appropriate language. The Receiving Office may also appoint several International Search Authorities as the competent ones, wherein the applicant may choose among them the one that suits him best. If the international application is filed to the International Bureau as the Receiving Office, the competent Authority (or the Authorities) of the international preliminary examination shall be the one (or the ones) that would be competent, if the international application were filed to the competent national (or regional) Office as the Receiving Office. Within the framework of the relevant Treaty that concerns the functioning of some Offices as the International Search Authorities, these Authorities may establish the limits of their competence with respect to some international PCT applications.
Any national Office or any intergovernmental organization that meets the requirements, in particular in regard to the personnel and the documentation, may be appointed as the International Search Authority. The appointment shall be made with the consent of the national Office or the intergovernmental organization being appointed as such Authority, and provided that an agreement subject to be approved by the Assembly is concluded. The rights and the obligations of the parties should be determined in the agreement, in particular, the formal obligation of the Office or the organization to apply and to observe all the general rules of the international search. The appointment shall be made for a certain period, which can be extended. Before making a decision on the appointment of any national Office or intergovernmental organization, or on the extension or the termination of such appointment, the Assembly shall hear the interested Office or organization and seek the opinion of the Technical Cooperation Committee.
When carrying out the international search, the International Search Authority shall be guided by the provisions of the Patent Cooperation Treaty, the Instruction and the agreements that shall be concluded by the International Bureau with this Authority in accordance with the Patent Cooperation Treaty and the Instructions to the Patent Cooperation Treaty.
Within the framework of its competence, the International Search Authority should carry out a number of checks, in particular, to establish that:
- the international application refers to the subject matter for which, in accordance with the Instruction, the International Search Authority is not obliged to carry out the international search, and in this case, it shall make a decision not to carry out such search, or
- the description of the invention, the claims or the drawings do not meet the established requirements to the extent that it is impossible to carry out the full search; the said Authority shall record this fact in the declaration and notify the applicant and the International Bureau that the international search report will not be prepared.
If any of the situations mentioned above is identified only in relation to certain claims, the international search report shall contain a relevant comment in relation to such claims, while in relation to other claims, the report shall be prepared according to a special form.
If the International Search Authority considers that the international application does not meet the requirement of unity of invention, as determined in the Instruction, the applicant shall be offered to pay additional fees. The International Search Authority shall prepare the international search report for those parts of the international application that relate to the invention first mentioned in the claims (“a main invention”), as well as, provided that the payment of the required additional fees within the prescribed period has been exercised for those parts of the international application that relate to the inventions for which such fees have been paid. However, the national legislation of any state, to which the international PCT application will be transferred, may stipulate that in the case, when the national Office of that state finds the offer of the International Search Authority to be justified and when the applicant has failed to pay all the additional fees, those parts of the international application for which the search has not been carried out shall be deemed withdrawn in respect to their operation in that state, if the applicant fails to pay a special fee to the national Office of that state.
Thus, the International Search Authority performs one of the most important functions, when considering the international PCT applications, namely, it carries out a sort of a check as to whether the claimed invention complies with the generally accepted patentability criteria.