Belgium: Supplementary international search system reviewed

December 04, 2015

During the 47th session of its assembly, held from October 5 to 14 2015, the PCT Union reviewed the supplementary international search system.

The supplementary international search system entered into force on January 1 2009 and was devised to allow PCT applicants to request one or more additional searches by searching authorities different from the International Searching Authority performing the main international search, allowing to focus on different language documents or searching subject matter which had not been searched by the International Searching Authority. The first year the system was in force, 25 requests were filed for a supplementary international search, a number which in 2014 had grown to a total of 102 requests. This however pales in comparison to the approximately 200,000 PCT patent applications or the approximately 15,000 requests for international preliminary examination which are filed annually. Hence, one could conclude that the supplementary international search is not very popular. Therefore, in advance of the PCT Union Assembly, the PCT Working Group decided to review the system and identified several shortcomings.

One of the main shortcomings the PCT Working Group identified is the fact that the supplementary international search is only offered by seven international authorities, being Russia, Sweden, the Nordic Patent Institute, Austria, Finland, the European Patent Office and only very recently, as of September 1 2015, Singapore. These Supplementary International Searching Authorities only offer searches in a limited set of languages, being West and North European languages, Russian, and only very recently Chinese as offered by the Intellectual Property Office of Singapore. As such, the possibilities of complementing the international search with different language documents by means of the supplementary international search are limited, since other important languages, such as Japanese, Korean, Arabic and Spanish are lacking.

At present, no other international authorities have shown any interest in providing the supplementary international search, citing among other things the low level of interest from applicants. In attempts to increase its popularity the supplementary international search system is confronted with the classic chicken-or-egg conundrum. Other international authorities have objected to the supplementary international search, as they put more belief in improving the results of the main international search, for example by providing a collaborative search by different international authorities for which a pilot project was proposed in February 2015.

One of the other main hurdles for the more widespread adoption of the supplementary international search, as indicated by the applicants, is the relatively high fees which are charged for the search, considering it can be partially based on the previous international search and does not need to be accompanied by a written opinion.

For this reason, the PCT Union Assembly decided to keep promoting the supplementary international search with both the applicants and the International Searching Authorities, which are not yet offering the service and to invite the International Authorities which already offer supplementary international searches to consider reviewing the scope of their services provided and consequently the levels of fees charged. In 2020, the PCT Union Assembly plans to again review the system taking into account the results of pilot projects on collaborative search.