Intellectual Property Alert

New Low-Fee Search Option and Expedited Examination for US-Based International Patent Applications

January 9, 2012

Effective tomorrow, January 10, 2012, applicants filing international patent applications under the Patent Cooperation Treaty (PCT) in the U.S. Patent and Trademark Office (USPTO) will be able to designate the Russian Federal Service for Intellectual Property (Rospatent) as the International Search Authority (ISA) and pay a Search Fee of only $415. The Rospatent search fee is substantially lower than those for the other search authorities a US applicant may choose, which are South Korea ($1,101), Australia ($1,833), the United States ($2,080) and Europe ($2,370). Applicants primarily concerned with minimizing cost while preserving international rights may therefore wish to consider selecting Russia as the ISA for their PCT applications.

An applicant whose PCT application receives a favorable search report and written opinion from Rospatent will be eligible for expedited examination in the USPTO. The “PCT-Patent Prosecution Highway” program between the USPTO and Rospatent enables an applicant to fast-track a corresponding US application. A US application is eligible for fast-tracking if at least one claim of the related PCT application is found by Rospatent to satisfy the novelty, inventiveness, and industrial applicability requirements for PCT applications. There is currently no fee associated with filing a fast-track examination request under this program.