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.