Information from the European Patent Office concerning limitations of the EPO's competence as a PCT authority1
It is recalled that the EPO has specified limitations concerning PCT applications for which, as from 1 March 2002, it will not act as International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA).1
Applicants concerned are strongly advised to check carefully whether or not a given application falls under the limitation before they indicate the EPO as ISA or file a demand with the EPO as IPEA.
The following practical arrangements will be established with respect to PCT applications where the applicant indicates the EPO as ISA or files a demand with the EPO as IPEA although the EPO is no longer the competent ISA and/or IPEA:
1. The EPO will perform a competence check on search copies of PCT/US or PCT/IB applications (that is, PCT applications filed with the United States Patent and Trademark Office (USPTO) or the International Bureau as receiving Office filed on or after 1 March 2002). This will be done immediately after receipt of the search copy (that is, the copy of the international application which is sent to the ISA by the receiving Office) within the framework of the so-called preclassification.
2. Where the EPO finds that it was indicated as the ISA although the application falls under the limitation as specified in OJ 1/2002, 52-552, it will delete that indication and indicate the USPTO as the competent ISA ex officio.
3. The EPO will inform the applicant, the IB and the USPTO accordingly (via a new version of Form PCT/ISA/224) and transfer money received as the search fee in respect of the application to the USPTO. (Please note that a refund to the applicant is not possible because the data necessary for such a transfer is not available to the EPO.)
4. Where, as from 1 March 2002, a demand is filed with the EPO although it is not competent for the international preliminary examination pursuant to the limitation as specified in the OJ 1/2002, 52-552, Rule 59.3(f) PCT applies.
5. The EPO will transmit the demand to the USPTO as the competent IPEA.
6. The EPO will inform the applicant, the IB and the USPTO accordingly (by Form PCT/IPEA/436) and refund any amount paid in respect of the demand to the applicant.
Further clarification concerning applicability of limitations
7. Note that the limitations concerning PCT applications for which the EPO will not act as ISA and/or IPEA apply even if the applicant has filed a concurrent Euro-direct application or has requested concurrent regional phase entry before the EPO. In addition, it should be noted that in the field of business methods, as a rule, no European search could be expected in any event3.