I filed a PCT application in February (seems like forever ago) and I received a search report back from the International Searching Authority (ISA) a couple of days ago. Since PCT applications are not all that common, I thought it would be nice to talk about PCT applications a little bit and what this search report entails.
As you may remember, there is no such thing as an "international patent application" but there is this thing called PCT application, which is pretty much the next best thing. Preparing a PCT application is pretty much the same as preparing your regular nonprovisional utility patent application, meaning you prepare the specification, claims, abstract, and drawings. Preparing the administrative forms is where it gets a little bit complicated.
You have to download this program called PCT-SAFE-FM. I think it's worth noting that using a PC is recommended if that is feasible. I normally use a Mac but I have a PC that I use for all the stuff that my Mac does not like doing. Anyways, once you complete all your forms, submit it through the USPTO (by designating US as the receiving office), and pay a ridiculous fee, you wait around for several months.
I should also note that I designated US as the ISA. I heard that some people like using the Korean patent office because they are not as expensive and they have a fast turn around time. I have never used the Korean patent office myself but maybe I will try them out next time. Who knows. Anyways, the ISA will conduct a giant patent search and provide you with a report stating whether or not your claims are novel or not.
The search report comprises these parts:
- a cover sheet
- a sheet saying everything (title, spec, drawings, abstract, etc.) looks dandy
- a sheet having a list of your claims with relevant prior art cited next to it
- a statement that tells you whether your claims are a GO or a NO-GO under the following criteria: novelty, inventive step, and industrial applicability
- citations and explanations
- search results
I found it amusing that the ISA used Google to conduct its patent search. Google wasn't the only search engine they used but it's funny that everyone resorts to Google at some point, myself included.
So, what do you do with this report? Well, not much. The report gives you an idea of what prior art references may be cited against you during prosecution. But your patent examiner may or may not cite those same references against you. The other thing to remember is that this report is not binding, and it does not decide whether or not your application will ultimately be successful. Additionally, you can make amendments to your claim during prosecution so some or all of these references may not matter as much later.