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PCT NEWSLETTER

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November 2014 | No. 11/2014

 

News from the European Patent Office

Withdrawal of its limitation of competence regarding certain international applications filed by US applicants

The European Patent Office (EPO), in its capacity as International Searching Authority (ISA), has notified the International Bureau (IB) that, with effect from 1 January 2015, it will withdraw its limitation of competence regarding international applications containing business methods filed by nationals and/or residents of the United States of America with the United States Patent and Trademark Office (USPTO) or the IB as receiving Office. This will concern all such applications that are filed on or after that date.

It is important to note that business methods, as such, continue not to be patentable under the European Patent Convention, and that the Notice from the EPO dated 1 October 2007 concerning business methods remains applicable (see the Official Journal of the EPO No. 11/2007, page 592 at: http://archive.epo.org/epo/pubs/oj007/11_07/11_5927.pdf). The ISA/EP will therefore continue to issue a declaration under PCT Article 17(2)(a) that no ISR will be established whenever an application relates only to a business method.

However, this change means that, in all cases where the subject matter of the application relates to business methods but involves technical means, ISA/EP will provide a search report for those parts of it which are more than mere business methods regardless of an applicant’s nationality or place of residence, and irrespective of whether the EP or the PCT route is chosen.  

This is the last limitation to be withdrawn by ISA/EP; as a result, as from 1 January 2015, international applications in all fields of technology will be considered by ISA/EP.

A link to further information, entitled “No more limitations to PCT work” is available on the EPO website at:

http://www.epo.org/applying/international.html

Processing of informal comments on earlier search results (“PCT Direct”)

On 1 November 2014, the EPO, in its capacity as RO and ISA, launched a new PCT service, “PCT Direct”, which applies to international applications filed on or after that date. Under PCT Direct, an applicant filing an international application with RO/EP, and claiming priority from an earlier application already searched by the EPO, can react to any objections raised in the search opinion drawn up for the priority application by filing a letter (“PCT Direct letter”) containing informal comments. Such informal comments should be in the form of arguments regarding the patentability of the claims of the international application, and where applicable, will include explanations regarding any modifications to the application documents, in particular to the claims, in comparison with the earlier application. Furthermore, the informal comments must be self-contained.

The international application will be processed under PCT Direct only where the following two requirements are met:

– the informal comments are filed together with the international application with the EPO as receiving Office in the prescribed form1 ; and
– the international application claims priority of an earlier application searched by the EPO (that is, a European application or, in the case of certain European States2, a national first filing.

During the international search performed by the EPO, the examiner will take into account any informal comments filed under PCT Direct when preparing the international search report and written opinion, provided that they meet the necessary requirements. However, he or she will make no explicit reference to the PCT Direct letter or its content in the written opinion.

Although PCT Direct letters do not form part of the international application, they will be made available to the public on PATENTSCOPE, in accordance with the PCT provisions on file inspection.

For further information about PCT Direct, please refer to the “Notice from the European Patent Office dated 18 August 2014 concerning the processing by the EPO as PCT receiving Office and International Searching Authority of informal comments on earlier search results (“PCT Direct”)” at:

http://www.epo.org/law-practice/legal-texts/official-journal/2014/09/a89.html

Change in practice concerning acceptance of address for correspondence

The EPO has notified a change in practice, with effect from 1 November 2014, with regard to the address for correspondence which may be given by applicants in an international application. The new practice has been introduced to facilitate the use of an address for correspondence in proceedings before the EPO, under both the European Patent Convention (EPC) and the PCT, as it allows applicants who are natural or legal persons to indicate an address for correspondence (although only if no professional representative or agent has been or is required to be appointed). Previously it was only possible to indicate an address for correspondence in the case of legal persons. Furthermore, during the international phase, the indication of an address for correspondence is no longer restricted to the territory of the Contracting States of the EPC.

For further details about the revised practice, please refer to the "Notice from the European Patent Office dated 4 September 2014 concerning the use of an address for correspondence in proceedings before the EPO by persons acting without a professional representative or agent" at:

http://www.epo.org/law-practice/legal-texts/official-journal/2014/10/a99/2014-a99.pdf

Note that the above-mentioned notice deals separately with international applications for which the EPO is acting as a receiving Office or as an international authority under the PCT (see Part III) and Euro-direct applications as well as international applications before the EPO as designated or elected Office in the European phase (see Part IV). 

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  1. For details as to the required form of submissions, please refer to the corresponding notice from the EPO at: http://www.epo.org/law-practice/legal-texts/official-journal/2014/09/a89.html
  2. At present, the EPO performs national searches for the following States: Belgium, Cyprus, France, Greece, Italy, Lithuania, Luxembourg, Malta, the Netherlands, San Marino and Turkey.

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