It was recently decided that the Eurasian Patent Office (official web site) will become a PCT International Searching Authority and International Preliminary Examining Authority.
This exciting development was brought to my attention by alert reader Xiangwei Meng, who is a paralegal at Patrade, a patent firm in Denmark.
It will be recalled that the members of the Eurasian Patent Organization are:
- Turkmenistan
- Republic of Belarus
- Republic of Tajikistan
- Russian Federation
- Republic of Kazakhstan
- Azerbaijan Republic
- Kyrgyz Republic
- Republic of Armenia
From the point of view of a patent applicant, one of the important benefits provided by the EAPO is that the applicant can file a single patent application in the EAPO as a regional patent office, and the granted patent provides protection in all eight member states.
The two-letter code for EAPO is “EA”. So the ISA will be called ISA/EA and the IPEA will be called IPEA/EA.
It will also be recalled that EAPO was among the very earliest participants in the DAS system. From as long ago as 2017, EAPO has been a Depositing Office for patents, industrial designs, and PCT applications, and has been an Accessing Office for patents and industrial designs.
When EAPO becomes active as an ISA and IPEA, this will expand from 23 to 24 the number of ISAs and IPEAs.
I couldn’t find the announcement. For what ROs or applicant nationalities (e.g., for applications filed in RO/IB) will ISA/EA and IPEA/EA be competent? Are there good reasons for an applicant who is not a national of one of the EA states to select ISA/EA or IPEA/EA?
You can see the announcement here. It is too soon for things to be posted on topics like which applicants can use the ISA/EA or what the search fees will be.
The starting-point question will be “which Receiving Offices will choose to certify ISA/EA as an ISA?”
My best guess is that we will see certifications from RO/TM (Turkmenistan), RO/BY (Belarus), RO/TJ (Tajikistan), RO/RU (Russia), RO/KZ (Kazakhstan), RO/AZ (Azerbaijan), RO/KG (Kyrgyzstan), and RO/AM (Armenia). Oh and of course as you point out RO/IB will be in a position to handle PCT applications in which the applicant has selected ISA/EA. Thus there will surely be at least nine ROs that are in a position to handle PCT applications in which the applicant has selected ISA/EA.
Note for example that although there are 23 ISAs now, there is no RO that has certified all 23, and indeed the highest number of ISAs that any RO has certified is 8. (There are four ROs that have certified 8 ISAs, and they are RO/IN, RO/MX, RO/US and RO/VN). What cannot be ignored is that it is a lot of trouble for an RO to carry out all of the internal steps and set up all of the needed internal processes for handling yet another ISA in addition to whatever ISAs the RO is already set up to handle. Among other things this requires setting up a number of bilateral links for data interchange and for transferring money. If you can be sure that lots of applicants are going to choose some particular ISA, then it is easy to justify all of these one-time costs and ongoing costs. But if only a few applicants per year were thought to be likely to pick some particular ISA, then it would not be easy to justify going to all of this trouble and effort.
Thank you. I later found the very short announcement in the PCT Newsletter but not the somewhat longer announcement at eapo.org. I had hoped that if some IP office went to the trouble of procuring an appointment as an ISA and IPEA, there might already been some discussions with ROs other than the “captive” national offices of their regional convention, and, therefore, that there might have been a prospective announcement that RO/XX and RO/YY are expected to certify. Thanks for dashing my hope.
Apart from search fees, are there technologies where ISA/EA might be especially competent so that a US or EP applicant (assuming eventual certification) might choose it for search quality reasons or something like that?