USPTO foot-dragging on implementation of ISA/JP

(Followup article has been posted.  Although the EBC did not know about it, there is a way to pay the ISA/JP fee in EFS-Web.)

Supposedly as of yesterday, PCT filers filing in RO/US were able to pick ISA/JP as their searching authority.  You can see the press release that says this.  And I blogged about this option back on June 19. But it looks like USPTO is dragging its feet on this.

A PCT filer in RO/US that is considering selecting ISA/JP faces a first problem of not knowing for sure whether ISA/JP is even going to be willing to carry out the International Search.  This is because ISA/JP has decided that the only RO/US patent applications that it will search are those whose claims are “directed to the field of green technology as defined by certain International Patent Classification classes.”  You can see the “green” IPC classes here.  It is a seven-page list starting with “Alternative Energy Production (Agricultural Waste)” and finishing with “Environmental Purification, Protection, or Remediation (using microbes or enzymes)”.  By the way I had to surf around quite a bit to find this seven-page list.  It’s nowhere on the USPTO web site.

How does it get decided in which IPC class the claims of a given application are classified?  Turns out the entity that figures out which class the claims are in is … you guessed it, the International Searching Authority.

So the way to find out whether ISA/JP will be willing to examine your PCT application is … to pick ISA/JP and then wait and see how they classify the claims, and if ISA/JP thinks the IPC class for your claims is not among the seven pages of approved IPC classes, then ISA/JP will bounce the case back to RO/US.  And then RO/US will invite you to pick some other ISA.  At which point you have lost maybe four or five months of progress toward getting your case searched and examined.

Now let’s just imagine, for sake of discussion, that you happen to have a crystal ball that works well enough to predict which IPC class the ISA/JP will pick for your claims.  And let’s imagine, again for sake of discussion, that the class is somewhere on this seven-page list.  At which point you might decide to go ahead and file your PCT application.  If so, then you will run into another difficulty.

USPTO has announced the fee code (1716) and the fee amount ($577) for a search by ISA/JP.  But unfortunately USPTO has not kept EFS-Web up to date.  The ISA/JP search fee is just not there.  I phoned up the EBC about this.  They agree it is not there, but they say they can’t do anything about it.

So I guess what you could do is file your PCT application without paying the fees, obtain your application number, and then prepare Form 2038 to pay the fees.  Mention the application number on Form 2038.  And then fax Form 2038 to the Central Fax Number.  That would work.

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