MPEP 1865.01 The European Patent Office as an International Preliminary Examining Authority

Manual of Patent Examining Procedure - MPEP

1800 Patent Cooperation Treaty

1865.01 The European Patent Office as an International Preliminary Examining Authority

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/index">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:

C 12 M Apparatus for enzymology or microbiology

C 12 N Micro-organisms or enzymes; compositions thereof

C 12 P Fermentation or enzyme-using processes to synthesise a desired chemical compound or composition or to separate optical isomers from a racemic mixture

C 12 Q 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

C 07 K Peptides

G 01 N 33/50 (including subdivisions) Chemical analysis of biological material, e.g. blood, urine; testing involving biospecific ligand binding methods; immunological testing

A 61 K 39 Medicinal preparations containing antigens or antibodies

A 61 K 48 Medicinal preparations containing genetic material which is inserted into cells of the living body to treat genetic diseases; Gene therapy

A 01 H 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:

G 06 F 17/60 Digital computing or data processing equipment or methods, specially adapted for specific functions: administrative, commercial, managerial, supervisory or forecasting purposes. To the extent that the application falls under above mentioned subgroup but does not relate to business methods the EPO' s competence is not affected.

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:

H 04 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).

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