1865.01 The European Patent Office as an International Preliminary Examining Authority [R-5]

The European Patent Office (EPO) has expressed the following limitations concerning its competency to act as an International Preliminary Examining Authority (IPEA). For updates or possible changes to these limitations, applicants should consult the PCT Newsletter which is available in electronic form from the web site (www.wipo.int/pct/en/newslett/) of the World Intellectual Property Organization.

I. FIELD OF BIOTECHNOLOGY

The EPO is not a competent authority within the meaning of PCT Article 16 (3)(b) and PCT Article 32 (3), and will not carry out international preliminary examination in respect of any international application filed before January 1, 2004, where the corresponding demand was filed with the EPO on or after March 1, 2002, if the application: (A) was filed with the USPTO as receiving Office by a national or resident of the U.S.; or (B) was filed in the International Bureau (IB) as receiving Office by a national or resident of the U.S. (provided the application did not also identify as an applicant at its time of filing a national or resident of a European Patent Convention (EPC) Contracting State); where the application contains one or more claims relating to the field of biotechnology as defined by the following units of the International Patent Classification:


C12M	Apparatus for enzymology or microbiology
C12N	Micro-organisms or enzymes; compositions thereof
C12P	Fermentation or enzyme-using processes to synthesise a desired chemical compound or composition or to separate optical isomers from a racemic mixture
C12Q	Measuring or testing processes involving enzymes or micro-organisms; compositions or test papers therefor; processes of preparing such compositions; condition-responsive control in microbiological or enzymological processes
C07K	Peptides
G01N 33/50 (including subdivisions)	Chemical analysis of biological material, e.g. blood, urine; testing involving biospecific ligand binding methods; immunological testing
A61K 39	Medicinal preparations containing antigens or antibodies
A61K 48	Medicinal preparations containing genetic material which is inserted into cells of the living body to treat genetic diseases; Gene therapy
A01H	New plants or processes for obtaining them; plant reproduction by tissue culture techniques

For information, U.S. classes covering the corresponding subject matter are listed below:


	424	Drug, bio-affecting and body treating compositions
	435	Chemistry: molecular biology and microbiology
	436	Chemistry: analytical and immunological testing
	514	Drug, bio-affecting and body treating compositions
	530	Chemistry: natural resins or derivatives; peptides or proteins; lignins or reaction products thereof
	536	Organic compounds–part of the class 532-570 series
	800	Multicellular living organisms and unmodified parts thereof
	930	Peptide or protein sequence

II. FIELD OF BUSINESS METHODS

The EPO is not a competent authority within the meaning of PCT Article 16 (3)(b) and PCT Article 32 (3), and will not carry out international preliminary examination in respect of any international application where the corresponding demand was filed with the EPO on or after March 1, 2002, if the application: (A) is filed with the USPTO as receiving Office by a national or resident of the U.S.; or (B) is filed in the IB as receiving Office by a national or resident of the U.S. (provided the application does not also identify as an applicant at its time of filing a national or resident of an EPC Contracting State); where the application contains one or more claims relating to the field of business methods as defined by the following units of the International Patent Classification:


G06Q	Data processing systems or methods, specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes; systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes, not otherwise provided for
G06Q 10/00	Administration, e.g., office automation or reservations; Management, e.g., resource or project management
G06Q 30/00	Commerce, e.g., marketing, shopping, billing, auctions or e-commerce
G06Q 40/00	Finance, e.g., banking, investment or tax processing; Insurance, e.g., risk analysis or pensions
G06Q 50/00	Systems or methods specially adapted for a specific business sector, e.g., health care, utilities, tourism or legal services
G06Q 90/00	Systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes, not involving significant data processing
G06Q 99/00	Subject matter not provided for in other groups of this subclass.

For information, the U.S. class covering the corresponding subject matter is listed below:


705	Data processing: financial, business practice, management, or cost/price determination

III. FIELD OF TELECOMMUNICATION

The EPO is not a competent authority within the meaning of PCT Article 16 (3)(b) and PCT Article 32 (3), and will not carry out international preliminary examination in respect of any international application where the corresponding demand is filed with the EPO on or after March 1, 2002, and before July 1, 2004, where the application: (A) is filed with the USPTO as receiving Office by a national or resident of the U.S.; or (B) is filed in the IB as receiving Office by a national or resident of the U.S. (provided the application does not also identify as an applicant at its time of filing a national or resident of an EPC Contracting State); where the application contains one or more claims relating to the field of telecommunication as defined by the following unit of the International Patent Classification:


H04	Electric communication technique with the exception of H04N: Pictorial communication, e.g. television

For information, the U.S. classes covering the corresponding subject matter are listed below:


	370	Multiplex communications
	375	Pulse or digital communications
	379	Telephonic communication
	380	Cryptography
	381	Electrical audio signal processing systems and devices
	455	Telecommunications

Demands for international preliminary examination submitted to a non-competent authority are subject to PCT Rule 59.3 . Applicants filing demands with the EPO in applications directed to the above subject matter will receive a notice from the EPO indicating that the demand is being forwarded to the IPEA/US under PCT Rule 59.3 (f). Any fees paid by the applicant to the EPO will be refunded to the applicant. Applicants have one month from the date of receipt of the demand transmitted to the IPEA under PCT Rule 59.3 to pay the handling fee (PCT Rule 57 and 37 CFR 1.482 (b)) and the preliminary examination fee (PCT Rule 58 and 37 CFR 1.482 (a)). See PCT Rules 57.3 and 58.1 (b).