IPO bags the ISA tag

18 November 2013
  • Dr Mohan Dewan & Rujuta Mehendale

An agreement between the World Intellectual Property Organization (WIPO) and the Indian Patent Office (IPO), hereinafter referred to as ‘the Agreement’, recently came into force, whereby the IPO commenced working as an International Searching Authority (ISA) and an International Preliminary Examination Authority (IPEA), under the Patent Co-operation Treaty (PCT). The IPO now joins ranks with the likes of the Australian Patent Office, the Canadian Patent Office, the European Patent Office (EPO), the State Intellectual Property Office of the People’s Republic of China (SIPO) and the United States Patent and Trademark Office, (USPTO) to take the total number of the searching authorities and preliminary examination authorities under the PCT to 17.

The Agreement that came into force on October 15, 2013, enlists certain standard provisions such as the basic obligations, competence of the authority, fees and charges, subject matter not required to be searched or examined and the languages of correspondence. Accordingly, on the basis of the powers vested upon it by Section 159 of the Indian Patents Act, 1970 (the ‘Act’), the Central Government, via a notification in the Official Gazette, amended the Patents Rules, 2003 (the ‘Rules’). The Patents (Amendment) Rules, 2013 contain some modifications such as in Rule 4, Rule 9, Rule 17, Rule 18, Rule 19, Rule 27 and Rule 138.

Rule 19 contains an additional set of rules (Rule 19A – Rule 19N) that describe the provisions of the Agreement in detail. Furthermore, a Fifth Schedule has been incorporated in the Act that contains details about the fees and charges involved, whenever the IPO is assigned as the ISA or the IPEA.

Although, the WIPO has not designated the IPO as a competent ISA for any country other than India yet, it is believed that inclusion of the IPO as an ISA and an IPEA under the PCT will have strategic implications on the global international filing scenario. The most significant advantage offered by the IPO as an ISA and an IPEA is the amount of fees charged. The Fifth Schedule to the Act and Annexure C of the Agreement state the fees and charges imposed by the IPO for searching and examining international applications. 10,000 INR (157 USD*) and 10,000 - 12,000 INR (157 - 188 USD*) are quoted as the search and the preliminary examination fees for legal entities. Details about the fees charged by some of the other ISAs and IPEAs, for legal entities, are presented in Table 1 below:

Table 1. Searching and preliminary examination fees charged by some ISAs/IPEAs:

Sr. No.

Name of the ISA/ IPEA

Searching Fees

Preliminary Examination Fees




600– 750






Japanese Patent Office




Australian Patent Office


555 – 771*






Korean Intellectual Property Office




Brazilian National Institute of Industrial Property




Russian Federal Service for Intellectual Property, Patents and Trademarks


84 – 125*

*as per the conversion rate on 12.11.2013

It is, thus, clearly evident that the fees charged by the IPO are significantly less as compared to those charged by most of other ISAs and IPEAs. Therefore, various countries, particularly those belonging to the developing countries segment may eventually avail of this facility.

Another important advantage is the time limit specified for preparing a search report. According to Rule 19C, the search report and the written opinion shall be furnished by the IPO within 3 months from the date of receipt of “the search copy” by the office or within 9 months from the priority date. This time limit is much longer in most of the other ISAs and IPEAs. For e.g. the USPTO furnishes (the report reaches the International Bureau) such a report by the end of 16 months from the priority date or 9 months from the filing date if no priority claim is made.

Furthermore, the examiners who examine the applications will be experts in the fields of science and technology, most specifically Information Technology, and therefore, the report and opinion generated by them would be highly beneficial for the patent applicants and their attorneys for further prosecution. All these factors would collectively encourage PCT filings both in India and abroad.

All in all, this could be considered as a welcome development for the IPO, especially after being at the receiving end of substantial criticism and controversy in recent times. This development is definitely a positive step which brings India a little closer to achieving global standards.


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