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1840 MANUAL OF PATENT EXAM1NlNG PROCEDURE
(3) Conducting international and international-type
searches and preparing international and international-type search
reports (PCT Art. 15, 17 and 18, and peT Rnles 25, 33 to 45 and
47); and
(4) Transmitting the international search report tc the
applicant and the International Bureau.
The United States Patent and Trademark Office
agreed to and was appointed by the PCTAssembly, to
act as an International Searching Anthority. As such
an authority, a primary function is to establish documentary
search reports on prior art with respect to
inventions which are the subject ofapplications. See
PCT Article 16.
Pursuant to an agreement concluded with the International
Bureau, the USPTO, as an International
Searching Authority, agreed to conduct international
searches and prepare intemational search.reports, for,
in addition to the United States of America, Barbados,
Brazil, India, Israel, Mexico, New Zealand, South
Africa, and Trinidad and Tobago. Theagreementstipulated
the English language and specified that the
subject matter to be searched is that which is searched
or examined in United States national applications.
TRANSMITTAL OF THE SEARCH COpy TO
THE INTERNATIONAL SEARCHING AU·
THORITY
The "search copy" is transmitted by the Receiving
Office to the International Searching Authority (PCT
Article 12(1», the details of the transmittal are provided
in PCT Rule 23.
THE MAIN PROCEDURAL STEPS IN THE IN·
TERNATIONAL SEARCHING AUTHORITY
The main procedural steps that any international
application goes through in the International Searching
Authority are (I) the making of the international
search (PCT Article 15), and (2) the preparing of the
international search report (PCT Article 18 and PCT
Rule 43).
COMPETENT INTERNATIONAL SEARCHING
AUTHORITY
In respect of international applications filed with
the U.S. Receiving Office, the United States International
Searching Authority, which is the Examining
Corps of the United States Patent and Trademark
Office, and the European Patent Office are competent
August 2001
1800-44
to carry out the international search (pCT Article 16,
PCT Rules 35 and 36, 35 U.S.C. 362 and 37 CFR
1.413).
The United States Patent and Trademark Office has
informed the International Bureau that in addition to
the United States Patent and Trademark Office, the
European Patent Office is competent as an International
Searching Authority for searching all kinds of
international applications filed in the United States
Receiving Office on and after October I, 1982. (pCT
Article 16(2) and PCT Rule 35.2(a)(i).
MATTERS TO BE CONSIDERED WHEN
CHOOSING AN INTERNATIONAL SEARCH­
ING AUTHORITY
Choosing The European Patent Office (EPO) as an
International Searching Authority could be advantageous
to United States applicants who designate countries
for European Regional patent protection in PCT
International applications for the following reasons:
(A) Claims may be amended according to EPO
search results before entering the European Office as
a designated Office.
(B) The EPO search fee need not be paid upon
entering the European Office as a designated Office.
(C) The EPO search results may be available for
use in a U.S. priority application.
(D) The EPO international search may be
obtained without the need for a European professional
representative.
(E) The European Patent Office search could provide
the U.S. applicant with the benefit of aEuropean
art search (which may be different from applicant's
own or the USPTO's search) before it is necessary to
enter the European Patent Office or other designated
Offices.
Some of the disadvantages that may occur due to
the European Patent Office making the international
search are the following:
(A) Additional mailing time to and from the EPO
Searching Authority may shorten the time for applicants
to respond to various invitations from the EPO
such as for comments on abstracts and payments of
additional search fees as well as for PCT Article 19
amendments to the claims after issuance of the International
Search Report.