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PCT, International Applications Referenced Items (381, 382, 383, 384, 385, 386, 387, 388, 389, 390, 391, 392, 393, 394, 395, 396, 397, 398, 399, 400, 401, 402, 403, 404, 405, 406)
(390)                   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 an international application is filed it is forwarded by the RO/US
to the ISA selected by applicant. If, after initial processing of the
application, the ISA determines that the application contains claims drawn
to subject matter for which it has declared that it is not competent to act,
the ISA will return the application to the RO/US. The RO/US will then notify
applicant 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, if the newly selected ISA is competent for the
subject matter of the claimed invention, will receive a search in accordance
with Chapter I of the PCT.

   Applicants are 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), 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 Off. Gaz. Pat. Office
261 and 265). 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.

March 13, 2009                                                 JOHN J. DOLL
                                     Acting Under Secretary of Commerce for
                           Intellectual Property and Acting Director of the
                                  United States Patent and Trademark Office

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