Russian Patent Office (Rospatent) now providing ISRs for U.S. inventors at low cost 

February 2, 2012

U.S. inventors and companies filing PCT patent applications may have a new opportunity to save money and obtain expanded search results for biotechnology.  Rospatent and the USPTO finally hammered out electronic document delivery issues and the long-awaited partnership between the two offices has finally gone online (USPTO Press Release).  Effective January 10, 2012 Rospatent is now will act as an available International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international applications filed with the USPTO as the Receiving Office (RO/US), under the Patent Cooperation Treaty (PCT).

The cost savings for designating Rospatent as the ISA are substantial over the other available options to U.S. applicants.  See our comparison chart below (USPTO Fee Schedule):

Fast Tracking Applications using Rospatent ISR

Russia is a signatory to the Patent Prosecution Highway (Rospatent PPH page).  If you receive a positive International Search Report (must file a Demand) from Rospatent that indicates your invention is free of prior art you may file a no-cost petition in the U.S. to accelerate your application out of turn.

Another Search Option for U.S. Inventors

Although there are currently fourteen (14) International Search Authorities (full list), only five (5) are available to U.S. Inventors (U.S., Europe, Australia, Korea and Russia) as the initial search authority.  Additional ISAs are available for supplementary examination (which is infrequently used).

Subject Matter that will be Searched

Korea (KIPO) has been a favorite option for technology transfer departments because it is relatively inexpensive (currently $1,101) and fast. However, under PCT Rule 39, KIPO will not search methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods (Rule 39.1(iv), under Article 17(2)(a)(i)).

Rospatent has indicated it will search everything in Rule 39.1 except  methods for treatment of the human or animal body by surgery or therapy expressly under the PCT provisions. However, Rospatent will search PCT subject matter it otherwise excluded under Rule 39.1 under Russia's national grant procedure.  This will likely include searching relating to various aspects of biotechnology making Rospatent an ideal search authority for the biotech field (see subject matter patentable in Russia below).

U.S., EPO, Australia, Korea and Russia - will still search all subject matter which is searched under their national patent grant procedure.   Therefore, most aspects of biotech are searched by the U.S. and EPO and the U.S. will search virtually everything else but under its own guidelines.  Australia has been criticized as unduely burdensome and highly restrictive in its searches.  Accordingly, Australia is infrequently designated as an International Search Authority.

Subject Matter Patentable in Russia

According to the Civil Code of the Russian Federation (as of Dec. 1, 2007), Part IV, Section IV, Article 1350(1) provides patent protection for a technical solution in any area related to a product (including a device, substance, microorganism strain, cell culture of plants or animals) or method (process of affecting a material object using material means).