by Avraham Hermon, Partner, JMB Davis Ben-David

Many applicants seeking patent protection worldwide use the Patent Cooperation Treaty (PCT) as part of their filing strategy. The PCT provides many advantages to applicants, including providing a search and determination of patentability of the claims of the patent application, as the International Search Report (ISR) and Written Opinion of the International Searching Authority (WO-ISA).

The ISR and WO-ISA can be valuable tools for applicants, especially for companies attempting to interest inventors in their potential IP. A “clean” ISR without any prior art references, or a positive WO-ISA may be used by an applicant to predict a clear path to patentability once the patent enters national phase in various jurisdictions. On the other hand, an ISR with many references cited may indicate to the applicant that there will be significant challenges in patenting the invention, and that perhaps the applicant should modify its product development, or at least its patent strategy.

Occasionally, the International Searching Authority will find that an application contains more than one invention, contrary to the “Unity of Invention” requirement that all of the claims contain a single novel unifying concept. In such a situation, the Authority will provide a search for an invention, typically the first invention listed in the claims, and issue an “Invitation to Pay Additional Fees,” a request that the applicant pay additional fees to search additional inventions.

Recently, I came across such an Invitation in an application that a colleague of mine was reviewing on behalf of a potential investor. In the Invitation, the International Searching Authority (ISA) had found that there were over ten thousand (!) inventions in the PCT application and had requested extra fees in an amount of over 19 million Euros! No additional fees were paid, and as a result, the ISA issued a Written Opinion only relating to the first invention. Incidentally, the first invention was a low commercial priority to the applicant, and as a result, the ISR and WO-ISA had little to no current value to the potential investor.

How can an applicant maximize the value and potential of its PCT application, without paying extra fees? The answer is rather simple: By planning in advance. If the claims are drafted so that the most commercially relevant invention is listed first, the ISA examiner will examine that invention first. Even if the ISA finds multiple inventions, the ISR will be issued on the most important claims. 

This advice is also useful for applicants filing patent applications in the Israel Patent Office. In notable contrast to a restriction requirement issued by the USPTO, in response to which any invention may be selected for examination, the practice of the Israel Patent Office is more similar to that of the ISA. In other words, the Israel Patent Office will issue a first office action on the first claimed invention, after which there is no possibility to choose to examine the claims directed towards a different invention in that application. The applicant may pursue another invention, but only by filing a divisional application, leading to extra costs and delay. 

In Summary, although a patent application may contain many claims to many inventions, the order of the claims is important, especially when filing a PCT or Israel patent application. Applicants and patent attorneys, while preparing patent applications, should understand the commercial value of each of the claims and prioritize the claims which are potentially most important by organizing the order of the claims, so that they are before any of the other claims.

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