The PCT has an “International Search System” (PCT Article 15). Regarding international search, various issues have been raised at WIPO’s PCT-related meetings, and I have faced some of these issues in our practice. Using the International Patent Search System requires skill and knowhow.
The “International Search System” was, in short, an attempt to conduct a worldwide unified search on patent applications in each country before the PCT came into effect at the global level. Originally, a “PCT application” was conceptually called a “bundle of applications” – a collection of applications to a large number of countries.
In order to “reduce the burden on each country’s Patent Office”, which is part of the PCT system philosophy, it is logical to conduct a single search for one PCT application from an international perspective.
Therefore, at the time of establishment of the PCT, the “single international search authority” (a Search Authority) aimed to carry out a single search. It was planned that “The World Unified Search Authority” would be established in cities around the world. Again, if this were achieved, a single international search would be conducted for a single international application, which would be consistent with the PCT philosophy.
However, it was found that there were problems with the search documents, language, and the search ability of the search organization, and as a result, the patent offices of each country were asked to share the international search. This is the current status of the “international search system,” and at present, multiple patent offices capable of conducting international searches are considered part of the “international search authority.” Therefore, the current status of international search is a reasonable compromise that is a little different from the original idea of PCT: however, all the problems associated with the current international search begin here.
For example, in my own experience from over 20 years ago, I filed a PCT application in the Japan Patent Office, as the Receiving Office, at the request of a client. The International Search Authority in Japan’s case was the Japan Patent Office (JPO). In the International Search Report, there was only “A” (notification of a document indicating a mere related technology), “X” (a document where novelty and inventive step were evaluated as being single) and “Y” (novelty and inventive step were evaluated in multiple documents). Since there was no description of one document that evaluated both novelty and inventive step, the applicant decided to enter into the European Patent Office (EPO) national search phase.
However, the search conducted by the EPO concluded that there was no novelty. I myself did not know the reason, and I had a lot of trouble explaining this situation to the client. As a result, the client had to abandon the acquisition of rights in this case.
At that time, I understood that “International Searches were conducted from an international perspective, and that applicants would then able to effectively decide whether or not they should enter into a national search phase based on the results of the searches. This experience remained both a “question” and a “problem” to me when I was involved in PCT. In fact, this problem of International Search itself became the subject of discussions at meetings such as the “PCT Reform Meeting” at WIPO.
The above example situation shows the “limitation of international search” that was, and is still, not completely resolved. Simply put, this is a problem caused by the difference between the idea of international search and the reality.
The cause of this is, in a nutshell, a problem that arises between the internationality of the original nature of patents, and the territoriality of the actual legal system of each country. In other words, it challenges the opportunity for the original internationality of inventions being distributed between countries and patents being obtained in many countries.
Therefore, to achieve, a Untied World Patent System that unifies the patent system of each country as originally conceived, ideally a system” would be established by a treaty or the like. That is, a system in which the World Patent Office exists in any country, a single examination authority examines it, a single world patent is established, and its rights extend to the entire world would be most suitable for patents.
However, since the legal system of each country is operated under territorial principles, such a world patent system is not feasible in reality. The result of that compromise is the current PCT system and the idea of ”patent harmonization discussion.” Both are the idea of ”internationalization on the premise of territorial principle”.
If we break it down further, there are still technical issues regarding the sharing of patent information in each country. Specifically, each country’s patent documents are established in each country’s language, and not all examiners of each country’s patent office can read and examine them accurately. There is also the issue of national language barriers impacting examination (ie. the problem of language ability of national examiners). Progress in machine translation will gradually solve these problems, but we are not there yet due to the sensibility of the patent examinations.
Due to the problem of the large amount of patent information, ISA examiners carry out “international search” while prioritizing the examination of domestic patent documents of the country to which the examiners belong to, and also English patent documents which are the language of the majority of them.
Further, the PCT application system has adopted an “all states designation” system which designates all PCT member states (153 countries) at the time of filing – and which states will be designated afterwards is completely unknown at the international stage. So, it is also impossible to conduct an international search tailored to the designated country in which obtaining rights is sought.
At various PCT reform meetings at the WIPO, “improvement of the quality of international search” has continued to be on the agenda. As a result, it has been revised to the current international search system having a very detailed structure. One example is that not only the so-called “International Search Report” but also the “International Search Report Opinion” is issued, and the examiner in charge details “what kind of view the novelty and inventive step of the invention have”. This practice is very user-friendly in comparison with the previous one, which simply pointed to the relevant documents according to the ranking of “X”, “Y”, and “A” explained earlier.
Therefore, at present, the International Search system has become very sophisticated and user-friendly. However, the International Preliminary Examination system (PCT Article 31) has substantially the same contents as International Search. Therefore, the coexistence of the International Preliminary Examination system and International Search is to be questioned.
Also regarding past PCT practices on the JPO side, even if the quality of the International Search had improved – for example, the JPO conducting an international search and then entering into the Japanese national phase on the premise of the result – the examiner in charge of International Search and the examiner in charge of domestic examination were basically different. As a result, the patent documents pointed out in the International Search were only referred to – the examiner in charge at the Japanese national phase re-examined from the beginning – and as a result, the examination result was different from the result of the International Search. This practice was contrary to the original philosophy of the PCT system.
This would be a basis for instilling a sense of distrust that the results of international search did not have much effect on examinations in the national phase, and that International Search was not very meaningful. However, in the current practice of the JPO, the examiner who conducted the International Search is also in charge of the domestic examination after entering the Japanese national phase, and this has also resulted in changing to the practice of issuing notices of refusal based on the documents pointed out in the international search report.
The PCT system is used by a large number of applicants – large, medium-sized and small and enterprises – and the utilization rate is still rising, making it the de facto general procedure for obtaining patents overseas.
However, there are remaining issues between the ideal and the reality even though the system has been amended. For we, the patent attorneys, it remains necessary to prevent clients from feeling distrust of the PCT system. In order to do so, we should be well aware of the essence of the PCT system and the problems that the current system has.
As you can, using the International Patent Search System requires skill and knowhow: with these abilities, securing global patents as desired, becomes simpler.
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