By Christopher P. Singer --
In a pre-OG Notice dated March 13, 2009, the U.S. Patent and Trademark Office addressed some issues relating to the competency of certain foreign patent offices to act as an International Searching Authority (ISA) under the PCT. According to the Notice, the USPTO has found that a number of international applications filed with the United States Receiving Office (RO/US) have elected an ISA which is not competent to search and examine the entirety of the claimed subject matter. An improper election of an ISA can delay issuance of the International Search Report and Written Opinion from the ISA. The delay arises after the RO/US forwards a PCT application to the elected ISA, and the ISA determines that the application contains claims drawn to subject matter for which it has declared that it is not competent to act. The ISA then returns the application to the RO/US, and the RO/US must then notify and invite the applicant to select a different ISA that is competent to handle the claimed subject matter. The newly selected ISA will perform the international search in accordance with Chapter I of the PCT.
The Notice made particular mention about the limited competency of the European and Australian Patent Offices for applications filed with the RO/US. Specifically, the EPO will not act as an ISA/IPEA for applications with one or more claims to a business method, and the AU-IPO will not act as an ISA/IPEA for applications with one or more claims drawn to mechanical engineering or analogous fields of technology as defined by certain International Patent Classification classes (IPCs). The USPTO suggests that applicants can avoid significant processing delays when filing international applications by reviewing applications which name either the EPO or AU-IPO as ISA and making sure those applications contain only claims that those offices are competent to search.
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