It has become apparent in recent months that an ever increasing number of international applications for which the EPO is to act as International Searching Authority and International Preliminary Examining Authority relate primarily to methods of doing business and commonplace features relating to their technological implementation.
For the avoidance of doubt the EPO wishes to remind applicants that pursuant to Rule 39.1(iii) PCT it will not carry out an international search on an application to the extent that its subject-matter relates to no more than a method of doing business, in the absence of any apparent technical effect.
Moreover, claims to commonplace technological implementations of such methods will not be searched because it would not serve any useful purpose to do so.
In such cases a declaration will be issued that no international search report will be established or where appropriate that a partial search report only will be established pursuant to Article 17(2) PCT.
This may well have consequences for the procedure before the EPO as IPEA in view of the fact that claims relating to inventions for which no international search report has been established need not be the subject of international preliminary examination (Rule 66.1(e) PCT).Furthermore the EPO is not required to carry out an international preliminary examination on an application if its subject-matter is a method of doing business (Rule 67.1(iii) PCT).
The EPO also wishes to remind applicants that methods of doing business per se are excluded from patentability pursuant to Article 52(2)(c) & (3) EPC. Claims to such methods and their commonplace technological implementation in European patent applications will not be searched because it would not serve any useful purpose to do so. In such cases no search report will be established or where appropriate a partial search report only will be established pursuant to Rule 45 EPC.