United States Patent and Trademark Office OG Notices: 19 February 2002
Notice Concerning EPO Competence to
Act as a PCT Authority
The European Patent Office (EPO) has notified the International
Bureau of the World Intellectual Property Organization (WIPO) and the
United States Patent and Trademark Office (USPTO) that the EPO will
limit their competence to act as both an International Searching
Authority and an International Preliminary Examining Authority for
certain applications filed by applicants who are residents or nationals
United States (US).
The EPO will no longer be a competent International Searching
Authority (ISA), within the meaning of PCT Article 16(3), for
international applications filed by US residents or nationals on or
after 01 March 2002 in the USPTO or International Bureau (IB) as
receiving Office, and where the application contains one or more claims
directed to the fields of biotechnology or business methods. For the
definition of what the EPO considers to be precluded subject matter in
the fields of biotechnology and business methods, applicants should see
the "Notice from the President of the European Patent Office,"
dated 26 November 2001, and which is attached to this Notice as Annex
A.
The EPO will no longer be a competent International Preliminary
Examining Authority (IPEA), within the meaning of PCT Article 32(3),
for international applications filed by US residents or nationals in
the USPTO or IB as receiving Office where the corresponding demand is
filed with the EPO on or after 01 March 2002, and where the application
contains one or more claims directed to the fields of biotechnology,
business methods or telecommunication. For the definition of what the
EPO considers to be precluded subject matter in the field of
telecommunication, applicants should see the "Notice from the
President of the European Patent Office," dated 26 November 2001, and
which is attached to this Notice as Annex A. This limitation applies to
all demands received at the EPO on or after 01 March 2002 including
demands in applications that were filed before 01 March 2002 for which
the EPO was still the competent ISA.
Residents or nationals of the US should not select the
EPO as the ISA/IPEA when filing applications in the above-listed
technologies. The classification of an international application
is a function of the ISA (PCT Rule 43.3(b)), and as such, the United
States Receiving Office (RO/US) has neither the resources nor the
authority to determine if applications fall within the above
International Patent Classification Units. Therefore, the RO/US
will rely solely on applicant determinations as to the area of
classification and the resulting competency of the EPO, and as such,
the RO/US will forward all applications in which the EPO is indicated
as the ISA/IPEA in our normal course of doing business.
The EPO has not published any procedures outlining their intent
to refund any fees in applications where the EPO determines that it is
not competent. If the application is forwarded to the ISA/US
under these conditions, applicant will be required to pay the current
fees required by the RO/US in order to avoid withdrawal of
the international application.
The USPTO understands that the EPO will perform international
searches and international preliminary examinations for residents and
nationals of the US in applications where the applicant has either
filed a concurrent Euro-direct application or has requested concurrent
regional stage entry in the EPO regardless of whether the application
is directed to subject matter in one of the precluded areas of
technology.
Those applicants who would be filing demands in the EPO or the
USPTO solely for the purpose of extending the deadline for national
stage entry from twenty (20) to thirty (30) months should note that
this may no longer be necessary, as discussed below.
The PCT Assembly decided to amend the time limits in PCT
Article 22(1) for entry into the national stage from 20 to 30 months
from the earliest priority date, effective 01 April 2002. Subject to
the following paragraph, this new time limit applies to international
applications in respect of which the period of 20 months from the
earliest priority date expires on or after 01 April 2002.
Since a number of countries will have to modify their national
law to implement this change, the IB has provided transitional
arrangements that will allow each country to postpone enactment so long
as notice is provided to the IB by 31 January 2002. In countries that
find it necessary to postpone enactment, an applicant wishing to
benefit from the 30-month time limit must file a demand before the 19
months from the earliest priority date. However, if the countries in
which applicant desires to enter the national stage do not have such
transitional arrangements, and the applicant desires merely to delay
national stage entry to 30 months from the earliest priority date, it
will no longer be necessary for applicant to file a demand.
January 16, 2002 STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy
Annex A
Notice from the President of the European Patent Office dated 26
November 2001 concerning limitation of the EPO's competence as a PCT
authority
Limitation criteria
1. Pursuant to Article 3(4)(a)(ii) of the PCT Agreement between
the European Patent Organisation and the International Bureau of the
World Intellectual Property Organization, as amended with effect from 1
November 2001 (OJ EPO 2001,601), the European Patent Office
(EPO) will not carry out
(a) international search in respect of any
international application filed on or after 1 March 2002 by
a national or resident of the United States of America with the
United States Patent and Trademark Office (USPTO) or the
International Bureau (IB) as receiving Office where such
application contains one or more claims relating to the fields of
biotechnology or business methods, as defined by the International
Patent Classification units indicated below in paragraphs 3 and 4.
(b) international preliminary examination in respect
of any international application filed by a national or resident
of the United States of America with the USPTO or the IB as
receiving Office where the corresponding demand is filed with the
EPO on or after 1 March 2002 and the application contains one or
more claims relating to the fields of biotechnology or business
methods as referred to in sub-paragraph (a) above or to the
field of telecommunication as defined by the International
Patent Classification unit indicated below in paragraph 5.
2. Without prejudice to the right of the EPO to issue any further
notice under Article 3(4) of the PCT Agreement which it may consider
necessary, the initial duration of these limitations will be three
years (Article 3(4)(c) of the PCT Agreement).
International Patent Classification
3. Biotechnology
C12M Apparatus for enzymology or microbiology
C12N Micro-organisms or enzymes; compositions thereof
C12P Fermentation or enzyme-using processes to synthesise a desired
chemical compound or composition or to separate optical isomers
from a racemic mixture
C12Q Measuring or testing processes involving enzymes or
micro-organisms; compositions or test papers therefor;
processes of preparing such compositions;
condition-responsive control in microbiological or
enzymological processes
C07K Peptides
G01N33/50 (including subdivisions) Chemical analysis of biological
material, e.g. blood, urine; testing involving biospecific
ligand binding methods; immunological testing A61K39 Medicinal
preparations containing antigens or antibodies
A61K48 Medicinal preparations containing genetic material which is
inserted into cells of the living body to treat genetic
diseases; gene therapy
A01H New plants or processes for obtaining them; plant
reproduction by tissue culture techniques
For information: US classes covering corresponding
subject-matter
424 Drug, bio-affecting and body treating
compositions
435 Chemistry: molecular biology and
microbiology
436 Chemistry: analytical and immunological
testing
514 Drug, bio-affecting and body treating
compositions
530 Chemistry: natural resins or derivatives; peptides or
proteins; lignins or reaction products thereof
536 Organic compounds-part of the class 532-570 series
800 Multicellular living organisms and unmodified
parts thereof
930 Peptide or protein sequence
4. Business method related inventions
GO6F17/60 Digital computing or data processing equipment or methods,
specially adapted for specific functions: administrative,
commercial, managerial, supervisory or forecasting purposes. If
an application falls within this subgroup but does not relate
to business methods, the EPO's competence is not affected.
For information: US class covering corresponding subject-matter
705 Data processing: financial, business practice,
management, or cost/price determination
5. Telecommunication
H04 Electric communication technique with the exception
of H04N: pictorial communication, e.g. television
For information: US classes covering corresponding
subject-matter
370 Multiplex communications
375 Pulse or digital communications 379 Telephonic
communication
380 Cryptography
381 Electrical audio signal processing systems and devices
455 Telecommunications
Notes
6. The EPO is no longer the competent authority within the
meaning of Article 16(3)(b)1 and Article 32(3) PCT for applications
meeting the criteria defined in paragraph 1.
7. Paragraph 1 also applies to applications filed with the IB
rather than the USPTO by two or more applicants,
- at least one of whom is a national or resident of the USA, and
- none of whom are nationals or residents of an EPC contracting state.
8. It is not possible to reassign competence to the EPO by
changing the applicant after the application has been filed with the
USPTO or the IB.
9. The limitation criteria in paragraph 1(b) apply to all demands
for international preliminary examination received at the EPO on or
after 1 March 2002 (sic), which means they are also applicable to
applications filed before 1 March 2002 for which the EPO was still the
competent International Searching Authority.
1The receiving Office deletes the indication of
any non-competent International Searching Authority ex officio
(Receiving Office Guidelines, No. 115, PCT Gazette - IV, 29 of 17
September 1998).
2Demands for international preliminary
examination submitted to a non-competent authority are subject to Rule
59.3 PCT.