Is a PCT protest worthwhile?

A member of the PCT listserv posed a question earlier today:

I’d like to protest a lack of unity of invention finding from the ISA/US where the authorized officer has indicated that the first and second inventions share technical features known in the art at the time of the invention, and thus cannot be considered special technical features that would otherwise unify the groups.  The art used to support this finding is suspect and I will indicate the reasoning for my position in my protest.  I will also be paying the second search fee.

Has any listmate successfully protested such a finding from ISA/US?  If so, would you be willing to share your protest document?  I am debating how detailed to make my response.  How seriously can these protests be reviewed when they are free of charge?

I’ll talk a bit about PCT protests and I will try to answer this list member’s questions as best I can.

First let’s provide a bit of background.  Anybody who files a PCT application is required (among other things) to pay a Search Fee.  The Receiving Office forwards the Search Fee (along with the Search Copy of the PCT application) to the International Searching Authority.

When the ISA receives the Search Copy (and Search Fee), one of the first steps carried out by the ISA is what might colloquially be termed “counting the inventions”.  (The formal terminology is that the ISA determines whether there is a lack of unity of invention among the claims.)  If the number of inventions is greater than one, then the applicant is invited to pay more search fees.  Suppose for example the ISA decides that there are three inventions.  In that case the applicant could respond to the invitation by paying two additional search fees, or one, or none.

What happened with the list member quoted above, it seems, is that ISA/US counted the inventions and found that there were two.  At which point ISA/US mailed out an Invitation to Pay Additional Fees. which is Form PCT/ISA/206.  The Invitation in her case invited her to pay another $2080 (or $1040 for a small entity, or $520 for a micro entity).

PCT rules permit an applicant to “protest” this.  One requirement of the protest is that you must pay the very search fees that you are protesting.  In addition, some ISAs require the would-be protestor to pay a “protest fee”.  ISA/US does not charge a protest fee, while ISA/EP charges € 865  (about $978) and ISA/KR charges ₩ 11000 (about $9).  The protest procedure is a “loser pays” procedure, meaning that if you win the protest, you get your protest fee back and you get back the excess search fees that you paid.  But if you lose the protest, you do not get any of the fees back.

The protest is reviewed by the ISA itself (not by the IB, not by the RO).  PCT rules say that the ISA is required to provide a new person to participate in evaluating the protest.

The membership of the review body … may include, but shall not be limited to, the person who made the decision which is the subject of the protest.

She asks “has any listmate successfully protested such a finding from ISA/US?”

Clearly, given that the review of a protest takes place within the particular ISA involved, we could expect that the results of protests might differ to some extent from one ISA to the next.  One ISA might have a very detailed review procedure staffed by completely different people than the person who originally counted the inventions.  A different ISA might have a procedure carried out in less detail, maybe by a review body containing only two people, one of which is the person who originally counted the inventions.

I have spoken with many, many PCT practitioners over the years from many different countries and the consensus is that it is not a good use of one’s time or money to file a protest.  I have heard of the occasional filer that went to the trouble of filing a protest and did not win.  I have never actually heard of a filer that filed a protest and won.

There are 148 Contracting States to the PCT, and the Receiving Offices of about forty of these States limit a filer to a choice of only a single ISA.  But the majority of Receiving Offices offer a choice of ISA.  The RO/US, for example, permits the filer to pick from among a list of seven International Searching Authorities.  I list the seven ISAs, and their fees, here.

The list member quoted above (or the list member’s client) selected ISA/US.  ISA/US charges $2080 per invention, a fee that is cut in half for a Small Entity and is cut in half again for a Micro Entity.

I will offer a reminder that ISA/KR’s search fee for second through nth inventions is a mere ₩ 225000 ($189 at today’s exchange rate).  So if you are filing a PCT application that is at risk of receiving an Invitation to Pay Additional Fees, there is much to be said for picking ISA/KR as one’s ISA.

 

Posted in PCT |

4 thoughts on “Is a PCT protest worthwhile?

  1. Carl: Thank you for this post. Indeed, this is a great example of where it would have been a much better idea to use ISA/KR.

    Does an applicant risk conceding the assertions of non-patentability in the Invitation Form PCT/ISA/206 if one does not at least make a record of the use of the suspect prior art as the basis for the finding that the shared technical features were known in the art at the time of the invention?

    • Interesting question. I’ve never seen this litigated. I imagine there are 148 answers, one for each State in which the applicant might enter the national phase.

      The applicant that wants to do something about this could consider filing an Informal Comment at the IB putting in the applicant’s side of the story.

      • Under 10.70 of the PCT INTERNATIONAL SEARCH AND PRELIMINARY EXAMINATION GUIDELINES, the ISA is directed to transmit the protest with the decision on the protest to the IB – at least when a fee has been paid. Then, the Applicant must request that the IB forward the texts of both the protest and the decision to any designated Offices:

        “10.70 Where the applicant paid additional search fee(s) under protest, he is informed promptly (Form PCT/ISA/212 may be used for that purpose) of any decision about the compliance with the requirement of unity of invention. At the same time the International Searching Authority transmits to the International Bureau a copy of the protest and of the decision thereon as well as any request by the applicant to forward the texts of both the protest and the decision thereon to the designated Offices.”

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