United States Patent and Trademark Office OG Notices: 09 April 2002

                           Clarification of Notice
                         Concerning EPO Competence to
                            Act as a PCT Authority

   On 23 January 2002, the United States Patent and Trademark
Office (USPTO) issued a notice indicating that the European Patent
Organisation (EPO) had notified the International Bureau of the World
Intellectual Property Organization (WIPO) and the USPTO that the EPO
had decided to 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 of the United States (US). The subject matter,
which will be precluded as of 01 March 2002, includes business methods,
biotechnology and telecommunications.

   In the 23 January 2002 notice, the USPTO indicated that the EPO
had not published any procedures outlining their intent to refund any
fees in applications where the EPO determines that it is not competent.
The USPTO has now been informed by the EPO that they will check to see
if they are a competent International Searching Authority for PCT/US or
PCT/IB applications filed on or after 01 March 2002, and where the EPO
determines that they are not competent, the EPO will inform the
applicant, the IB and the USPTO accordingly. The EPO will then transfer
both the search copy and the search fee to the USPTO. Where a demand is
filed with the EPO after 01 March 2002, and the EPO determines that
they are not competent to act as the International Preliminary
Examining Authority, the EPO will inform the applicant, the IB and the
USPTO. The EPO will then transmit the demand to the USPTO and refund
any fees paid to the applicant.

   The USPTO has now been informed by the EPO that they will not
be performing international searches and international preliminary
examinations for residents and nationals of the United States in
applications even in those situations where an EPO search and
examination is being performed on the same subject matter in a
concurrently filed Euro-direct application or a concurrent regional
stage entry in the EPO if the application contains subject matter
directed to one of the precluded areas of technology.

March 5, 2002                                              STEPHEN G. KUNIN
                                                    Deputy Commissioner for
                                                  Patent Examination Policy