kipoThose who have heard me lecture about the Patent Cooperation Treaty are familiar with my tag line “trendy, modern, and up-to-date” (TMU).  The idea of course is that we all surely do want to be TMU when serving clients.  Using ePCT for example to administer our PCT applications.  Well, I am delighted to report that the Korean patent office, in its role as an International Searching Authority, is moving in the direction of being trendy, modern, and up-to-date.  How so, you may ask?

To answer this question we need a bit of background.  When you file a PCT application, you have no choice but to pick an ISA (International Searching Authority).  In the old days, a US applicant had only two choices — ISA/US and ISA/EP.  It was good to have two choices instead of just one choice, but in those days EPO was pretty expensive and USPTO rarely got its ISA work done on time.  In August of 2005 I wrote a letter to then-Director Jon Dudas suggesting that he add to the ISA choices for US applicants.  I suggested adding South Korea, Australia, Russia and Japan as ISA options for US applicants.

Later came good news from Director Dudas — South Korea would soon be added as an ISA choice for US applicants.  USPTO announced that starting on January 1, 2006, US filers would be able to pick ISA/KR as a searching authority.

After that, USPTO added Australia and Russia as ISA options.  Israel’s ISA is now available to US filers, and soon Japan will be available.

Of these ISAs that became available to US filers after my letter to Director Dudas, by far the most popular has been South Korea.  Tens of thousands of US PCT filers have picked ISA/KR in the seven-plus years that this choice has been available.  ISA/KR is modest in cost, the work usually gets done close to timely, and in the technology areas where I file a lot (electronics, physics, software, internet, business methods) ISA/KR does at least as good a job (in terms of quality) as other ISAs and better than some.

Which gets to today’s news about ISA/KR.

When you pick ISA/KR, you are setting yourself up for two international Express Mail packages.  A first Express Mail package shows up a month or so after you file your PCT application.  This big thick expensive envelope arrives, with twenty-five or so dollars’ worth of postage affixed, and inside is a single piece of paper, Form PCT/ISA/202.  This is the document by which ISA/KR lets you know that it has received the “search copy” of your PCT application as well as the search fee.  This starts a three-month clock running, by the end of which the ISA is supposed to have established your International Search Report and Written Opinion of the ISA.

It has always struck me as wasteful that ISA/KR would spend $25 and go to all of this trouble of preparing an Express Mail shipping label, and running the package to the post office, just to deliver a single page that could have been faxed or emailed.  Not to mention that it would take a couple of days at least for the post offices involved to do their jobs and to deliver the Express Mail package.

Three months later, often as predictable as clockwork, a second Express Mail package would arrive from Korea, this with the ISR/WO inside.  This too would have cost some $25 postage, and would impose a delay of some days in delivering the ISR/WO to us.  (I will note that ePCT has often been the way we get the ISR/WO the fastest, with the Express Mail package from the ISA showing up the next day.)

Anyway, the Korean patent office is now moving in the TMU direction.  Starting on December 1, 2014, ISA/KR has been emailing its communications to the applicants.  This works only for those applicants who (in the Request) authorized email communications.

If you are an applicant it is, of course, TMU to authorize email communications.  After all it is good to receive that precious ISR/WO some days earlier as compared with when you would otherwise have received the ISR/WO.  If it’s good news, you can enter the US national phase, and put your case on the Highway, some days earlier than would otherwise be possible.

Kudos to the Korean patent office for moving in the direction of being trendy, modern, and up-to-date!



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