Further responsiveness by a patent office

(Updated October 16, 2020 to reflect that the IB has now updated Annex D for Finland, noting that ISA/FI does not charge a protest fee.  Now only Spain’s searching authority remains outstanding in this effort.)

A patent office that was responsive recently to a practitioner’s frustration has now been even more responsive.  How is that for a bit of good news?

There are twenty-three International Searching Authorities (ISAs) in the PCT system.  The Treaty and the PCT Rules provide that an ISA may charge a so-called “protest fee” for the filing by the applicant of a protest.  (A “protest” is a procedure by which an applicant can ask an ISA to reconsider its finding that the claims of a to-be-searched PCT application lack “unity of invention”. See my blog article Is a PCT protest worthwhile?)  Each ISA gets to choose whether or not to impose a protest fee, and if it chooses to impose such a fee, the ISA gets to choose the amount of that fee.

You will recall my blog article of September 18, 2020 (What is the protest fee in ISA/US?) in which I reported the frustration of a patent practitioner who had tried and tried to find any place in the USPTO’s web site where the USPTO came out and said whether or not the USPTO (as an ISA) charges a protest fee.  As it turns out, the USPTO goes out of its way to avoid coming out and actually answering this question anywhere in the MPEP or in the USPTO fee sheet or anywhere on USPTO’s web site.  There is an MPEP section that would be the natural place for this question to be answered and the answer to the question is conspicuously absent from that MPEP section.

In that blog article I mentioned that if you Google that question, the top search result (try it here) is an article in my blog where I answer this question (the answer turns out to be that USPTO does not charge a protest fee).

In that blog article I also mentioned that WIPO, in its PCT Applicant’s Guide, provided the answer to this question for sixteen of the twenty-three ISAs.  What this meant was that sixteen of the twenty-three ISAs had gone to the trouble of providing this information to WIPO so that WIPO could include this information in the relevant Annex in the Applicant’s Guide.  I also mentioned that there were seven ISAs (Australia, Canada, Spain, Finland, Japan, Sweden and US) that had not provided this information to WIPO and thus for those seven ISAs, the answer to the “do they charge a protest fee?” question could not be obtained from the Applicant’s Guide.

The practitioner shared her frustration on the PCT listserv late in the day on Thursday, September 17, and I imagine that the listserv posting is how WIPO learned of this circumstance.  Early on the morning of Monday, September 21, I was astonished (in a good way) to learn that WIPO had made inquiry to the USPTO, had gotten an answer from the USPTO that it does not charge a protest fee, and had updated Annex D of the PCT Applicant’s Guide to show this information.  I blogged about this on September 22 (An example of Patent Office responsiveness).

Since then, what I see is that WIPO has been making inquiry to the other ISAs that had until not provided this information for the Applicant’s Guide, and has made progress filling in the missing pieces of information.  Of the seven ISAs that had not provided that information until now, five are now taken care of:

  • Australia – Annex D updated September 24, 2020 to reflect that ISA/AU does not charge a protest fee.
  • Canada – Annex D updated September 24, 2020 to reflect that ISA/CA does not charge a protest fee.
  • Japan – Annex D updated October 2, 2020 to reflect that ISA/JP does not charge a protest fee.
  • Sweden – Annex D updated September 24, 2020 to reflect that ISA/SE does not charge a protest fee.
  • US – Annex D updated September 22, 2020 to reflect that ISA/US does not charge a protest fee.

This leaves only the ISAs in Spain and Finland as ISAs for which the question “do they charge a protest fee?” remains unanswered in the PCT Applicant’s Guide.

I’d guess that it will not be long before WIPO manages to extract answers to this question from those two patent offices as well.  

I offer my compliments to WIPO for tackling this project and for making so much progress.  The results will save frustration for patent practitioners in the future.

One Reply to “Further responsiveness by a patent office”

  1. Carl, thanks for noticing this and reporting it, and three cheers for the people at WIPO who made this happen (and who continue to listen to our concerns and address them).

Leave a Reply

Your email address will not be published. Required fields are marked *