March 18, 2009

On Friday, the USPTO issued an announcement regarding a "significant number of international applications" filed in the U.S. Receiving Office under the Patent Cooperation Treaty (PCT) that were filed with a chosen International Searching Authority (ISA) that is not competent to review the subject matter of the claimed invention. For example, the European Patent Office (EPO) will not act as an ISA for applications having one or more business method claims. In addition, the Australian Patent Office (IP Australia) will not act as an ISA for applications having one or more claims having subject matter set forth in Annex A of the Arrangement between IP Australia and the USPTO (as highlighted in the Official Gazette excerpt link below). As noted by the USPTO, "[t]o 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." Procedurally, if the selected ISA determines, upon receipt of the international application with the U.S. Receiving Office, that it is not competent to act on the application, the application will returned to the U.S. Receiving Office, who will then notify and invite the applicant to select a new ISA. Once selected, the application will be routed to the new ISA for processing. However, this procedure could take quite some time, and may result in the applicant receiving a search report and written opinion later than originally anticipated.

USPTO Announcement (PDF): LINK
Official Gazette Excerpt: LINK


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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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