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1840.01 The European Patent Office as an International Searching Authority - 1800 Patent Cooperation Treaty

1840.01 The European Patent Office as an International Searching Authority [R-1]

Since October 1, 1982, the European Patent Office (EPO) has been available as *>an International< Searching Authority for PCT applications filed in the United States Receiving Office. The choice of >International< Searching Authority, either the EPO or the United States Patent and Trademark Office, must be made by the applicant on filing the international application.**

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I.    SUBJECT MATTER THAT WILL NOT BE SEARCHED BY THE EPO

A.    Notice from the European Patent Office Dated November 26, 2001 Concerning Limitation of the EPO' s Competence as a PCT Authority

The European Patent Office is not a competent authority within the meaning of PCT Article 16(3)(b), and will not carry out international search in respect of any international application filed on or after March 1, 2002 by a national or resident of the United States of America with the United States Patent and Trademark Office or with the International Bureau as receiving Office where such application contains one or more claims relating to:

(A)    the field of biotechnology as defined by the following units of the International Patent Classification:

C 12 M	Apparatus for enzymology or microbiology
C 12 N	Micro-organisms or enzymes; compositions thereof
C 12 P	Fermentation or enzyme-using processes to synthesise a desired chemical compound or composition or to separate optical isomers from a racemic mixture
C 12 Q	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
C 07 K	Peptides
G 01 N 33/50 (including subdivisions)	Chemical analysis of biological material, e.g. blood, urine; testing involving biospecific ligand binding methods; immunological testing
A 61 K 39	Medicinal preparations containing antigens or antibodies
A 61 K 48	Medicinal preparations containing genetic material which is inserted into cells of the living body to treat genetic diseases; Gene therapy
A 01 H	New plants or processes for obtaining them; plant reproduction by tissue culture techniques

For information, U.S. classes covering the corresponding subject matter are listed below:

	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

(B)    the field of business methods as defined by the following units of the International Patent Classification:

G 06 F 17/60

Digital computing or data processing equipment or methods, specially adapted for specific functions: administrative, commercial, managerial, supervisory or forecasting purposes. To the extent that the application falls under above mentioned subgroup but does not relate to business methods the EPO' s competence is not affected.

For information, the U.S. class covering the corresponding subject matter is listed below:

705	Data processing: financial, business practice, management, or cost/price determination

The U. S. Receiving Office will forward all international applications to the EPO as ISA if so indicated by the applicant and the EPO will perform a competence check on the search copy. Where the EPO finds that it was indicated as the ISA but the application falls under the limitations indicated above, the EPO will ex officio change the ISA from EPO to the USPTO and will inform the applicant, the International Bureau and the USPTO accordingly. The EPO will transfer moneys received as the search fee as well as the search copy to the USPTO.

(B) Declaration Under PCT Article

17(2)(a)(i)<

It should be noted that >even when< the European Patent Office >is a competent International Searching Authority (for example, if one or more applicants is a resident or national of an EPC contracting state and the application was filed with the International Bureau as receiving Office), the EPO nonetheless< will not search, by virtue of PCT Article 17(2)(a)(i), any international application to the extent that it considers that the international application relates to subject matter set forth in PCT Rule 39.1. Furthermore, the European Patent Office is not equipped to search computer programs.

II.    FEES FOR SERVICES OF THE ISA/EP<

The international search fee for the European Patent Office must be paid to the United States Patent and Trademark Office (USPTO) as a Receiving Office *>with one month from< the time of filing the international application. The search fee for the European Patent Office is announced weekly in the Official Gazette in United States dollars. The search fee will change as costs and exchange rates require. If exchange rates fluctuate significantly, the fee may change frequently. Notice of changes will be published in the Official Gazette shortly before the effective date of any change.

If the European Patent Office as the International Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in PCT Rule 13, the European Patent Office will invite applicants to timely pay directly to it an additional search fee in **>Euros< for each additional invention.

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