| Patents > Organization > Examination Policy > PCT Legal Administration > Announcements Concerning the PCT |
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News & Announcements Concerning the PCT:01 October 2009 Change to EPO Search Fee Effective 01 October 2009, the amount of the search fee for the European Patent Office (EPO) to act as the International Searching Authority (ISA) will be increased to $2378. The revised PCT Fee Schedule is available at: http://www.uspto.gov/web/offices/pac/dapps/pct/fees.htm.
15 September 2009 Changes to Search Fees Effective 15 September 2009, the amount of the search fee for the IP Australia (IPAU) to act as the International Searching Authority (ISA) was increased to $1278 and the search fee for the Korean Intellectual Property Office (KIPO) to act as the ISA was increased to $729.
PCT E-mail List The Office of PCT Legal Administration maintains an e-mail list to notify PCT customers of updates to the forms and other information. Due to technical malfunction, the existing e-mail list has been lost and needs to be recreated. If you wish to be added to the list, please submit your requests to pctupdates-request@uspto.gov . Please ensure that you include your preferred e-mail address in the request. The USPTO privacy policy governs use of this list.
01 July 2009 Changes to Sequence Listing and Tables Related Thereto The Administrative Instructions under the Patent Cooperation Treaty, as in force from July 1, 2009, contain important changes relating to the manner of filing and applicable fees for sequence listings and related tables in international applications (see http://www.uspto.gov/web/offices/pac/dapps/pct/sl_01_july_09.pdf). The complete text may be accessed at: http://www.wipo.int/pct/en/texts/index.htm.
01 July 2009 Changes to Filing Amendments When filing amendments of the claims under PCT Articles 19 and/or 34, applicants have to submit a complete set of claims rather than, as at present, replacement sheets only for those sheets of claims which differ from sheets previously filed (see amended PCT Rules 46.5 and 66.8(c)).
Limited Competency of Certain International Searching Authorities With Respect to Applications Filed in the USPTO The USPTO has noticed a significant number of international applications filed in the United States receiving Office (RO/US) under the Patent Cooperation Treaty (PCT) where the applicant has chosen an International Searching Authority (ISA) which is not competent for the subject matter of the claimed invention. This can result in significant delays in the issuance of the International Search Report and Written Opinion of the International Searching Authority. When such an application is filed it is forwarded by the RO/US to the ISA selected by applicant. After processing the application, the ISA will return the application to the RO/US with an indication that it is drawn to subject matter for which the ISA is not competent to act. The RO/US will then notify applicant of such and invite applicant to select a competent ISA. Once the RO/US receives a new indication from applicant as to a new ISA, the RO/US will forward the application to the newly selected ISA where it will undergo further processing and will eventually receive a search in accordance with Chapter I of the PCT. Applicants are hereby reminded that certain ISAs have limited their competency for applications filed with the RO/US. Specifically, the European Patent Office (EPO) will not act as an ISA/IPEA for applications with one or more claims to a business method (see PCT Applicant's Guide, Annexes D(EP), E(EP) and PCT Gazette No. 07/2005, page 4432 and No. 38/2006, page 19070). Further, the Australian Patent Office (IP Australia) has declared that it is not competent for applications with one or more claims drawn to subject matter set forth in Annex A of the Arrangement between IP Australia and the United States Patent and Trademark Office (see 1337 OG 263). To avoid significant processing delays, applicants filing international applications naming either the EPO or IP Australia as the ISA should take care to ensure that the application does not contain any claims for which the selected ISA is not competent.
New ISA/IPEA for International Applications filed in RO/US The United States Patent and Trademark Office (USPTO) and IP Australia (IPAU) entered into an agreement in which IPAU will act as an available International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA) for certain international applications filed with the USPTO under the Patent Cooperation Treaty (PCT). Effective 01 November 2008, applicants may select IPAU as the ISA in international applications filed in the United States Receiving Office (RO/US). See the press release at: http://www.uspto.gov/web/offices/com/speeches/08-36.htm. Certain international applications that contain one or more claims relating to particular mechanical engineering or analogous fields of technology may be excluded from eligibility by IPAU. The following is a list of the subject matter for which IPAU is NOT a competent ISA or IPEA for international applications filed with the RO/US by International Patent Classification (8th edition):
IPAU as an ISA does not provide copies of the cited documents with the International Search Report. However, IPAU provides a service whereby the applicants can purchase copies of cited documents. See the information at: http://www.uspto.gov/web/offices/pac/dapps/pct/IPAU_ordering_citations.pdf.
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