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

0 comments:

Post a Comment

WIPO Press Releases

WIPO General News

Patent References

Click HERE to search issued U.S. Patents

Click HERE to search published U.S. Patent Applications

Click HERE to browse the MPEP (E8r6 in HTML and PDF, and E8r7 in PDF)

Click HERE to search patent assignments recorded with the USPTO

Click HERE to search Title 37 of the Code of Federal Regulations (rev. 7/1/08)

Click HERE to browse Title 35 of the U.S. Code

Click HERE to view current USPTO fees

Disclaimer

Copyright 2006-2010, Mark Reichel. The Daily Dose of IP is my personal website, and I am not providing any legal advice or financial analysis. Any views expressed herein should not be viewed as being the views of my employer, Ice Miller LLP. Any comments submitted to this blog will not be held in confidence and will not be considered as establishing an attorney-client relationship. Information submitted to this blog should be considered as being public information, and the submitter takes full responsibility for any consequences of any information submitted. No claims, promises, or guarantees are made or available regarding the completeness or accuracy of the information contained in this blog or otherwise available by searching from or linking away from this blog.

EPO Updates

Trademark References

Click HERE to search issued and pending U.S. Trademarks

Click HERE to search TTAB proceedings (via TTABVUE)

Click HERE to search trademark assignments recorded with the USPTO

The DDIP Author





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.

Click HERE to view my full professional bio at Reichel IP LLC.


Subscribe/Feedback

Click HERE to join the e-mail list for my blog

Click HERE to provide feedback on the DDIP blog

Fellow Blogs/Bloggers

AwakenIP (Kuester)
Counterfeit Chic (Scafidi)
I/P Updates (Heinze)
Internet Cases (Brown)
Likelihood of Confusion (Coleman)
Patent Baristas (Albainy-Jenei)
Patent Docs (Zuhn et al.)
Patently-O (Crouch)
The 271 Patent Blog (Zura)
The Ice Loop (Ice Miller LLP)
The Indiana Law Blog (Oddi)
The Invent Blog (Nipper)
The Patent Prospector (Odom)
The TTABlog (Welch)