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Announcements Concerning the PCT:Limited Competency of Certain International Searching Authorities With Respect to Applications Filed in the USPTO The USPTO has noticed a significant number of international applications filed in the United States receiving Office (RO/US) under the Patent Cooperation Treaty (PCT) where the applicant has chosen an International Searching Authority (ISA) which is not competent for the subject matter of the claimed invention. This can result in significant delays in the issuance of the International Search Report and Written Opinion of the International Searching Authority. When such an application is filed it is forwarded by the RO/US to the ISA selected by applicant. After processing the application, the ISA will return the application to the RO/US with an indication that it is drawn to subject matter for which the ISA is not competent to act. The RO/US will then notify applicant of such and invite applicant to select a competent ISA. Once the RO/US receives a new indication from applicant as to a new ISA, the RO/US will forward the application to the newly selected ISA where it will undergo further processing and will eventually receive a search in accordance with Chapter I of the PCT. Applicants are hereby reminded that certain ISAs have limited their competency for applications filed with the RO/US. Specifically, the European Patent Office (EPO) will not act as an ISA/IPEA for applications with one or more claims to a business method (see PCT Applicant's Guide, Annexes D(EP), E(EP) and PCT Gazette No. 07/2005, page 4432 and No. 38/2006, page 19070). Further, the Australian Patent Office (IP Australia) has declared that it is not competent for applications with one or more claims drawn to subject matter set forth in Annex A of the Arrangement between IP Australia and the United States Patent and Trademark Office (see 1337 OG 263). To 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.
12 January 2009 Changes to Transmittal and US Search Fees The United States Patent and Trademark Office (Office) is amending the rules of practice to adjust the transmittal and search fees for international applications filed under the PCT. The Office is adjusting the PCT transmittal and search fees to recover the estimated average cost to the Office of processing PCT international applications and preparing international search reports and written opinions for PCT international applications. The changes are applicable to any international application having a receipt date that is on or after January 12, 2009.
The revised PCT Fee Schedule is available at: http://www.uspto.gov/web/offices/pac/dapps/pct/fees.htm. 01 January 2009 Changes to Certain International Filing and Search Fees The International Bureau of the World Intellectual Property Organization has informed the United States Patent and Trademark Office, that due to an adjustment in the exchange rate of the U.S. dollar with regard to the Swiss franc, the dollar amount of the following fees for international applications filed in the RO/US will change, effective 01 January 2009.
The amount of the search fee for the European Patent Office (EPO) to act as the International Searching Authority (ISA) will decrease to $2410, effective 01 January 2009. The amount of the search fee for the Korean Intellectual Property Office (KIPO) to act as the International Searching Authority (ISA) for international applications filed in English with the RO/US will increase to $609, effective 01 January 2009. The revised PCT Fee Schedule is available at: http://www.uspto.gov/web/offices/pac/dapps/pct/fees.htm.
New ISA/IPEA for International Applications filed in RO/US The United States Patent and Trademark Office (USPTO) and IP Australia (IPAU) entered into an agreement in which IPAU will act as an available International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA) for certain international applications filed with the USPTO under the Patent Cooperation Treaty (PCT). Effective 01 November 2008, applicants may select IPAU as the ISA in international applications filed in the United States Receiving Office (RO/US). See the press release at: http://www.uspto.gov/web/offices/com/speeches/08-36.htm. Certain international applications that contain one or more claims relating to particular mechanical engineering or analogous fields of technology may be excluded from eligibility by IPAU. The following is a list of the subject matter for which IPAU is NOT a competent ISA or IPEA for international applications filed with the RO/US by International Patent Classification (8th edition):
IPAU as an ISA does not provide copies of the cited documents with the International Search Report. However, IPAU provides a service whereby the applicants can purchase copies of cited documents. See the information at: http://www.uspto.gov/web/offices/pac/dapps/pct/IPAU_ordering_citations.pdf.
02 October 2008 Changes to Certain U.S. National Stage Fees The United States Patent and Trademark Office is adjusting certain patent fee amounts, including U.S. National Stage fees, for fiscal year 2009 to reflect fluctuations in the Consumer Price Index (CPI), effective 02 October 2008. The PCT Fee Schedule is posted at: http://www.uspto.gov/web/offices/pac/dapps/pct/fees.htm. Further, the new Transmittal Letter to the United States Designated/Elected (DO/EO/US) Concerning a Submission Under 35 U.S.C. 371 (form PTO-1390) with the updated fee amounts will be available on 02 October 2008 at: http://www.uspto.gov/web/offices/pac/dapps/pct/files/natstg/pto-1390.pdf.
EFS-Web 1.4 and PCT - UPDATE In a previous announcement, it was posted that EFS-Web would check the international application number and the international filing date entered by applicants into the Graphical User Interface in the EFS-Web screen, when submitting the initial documents to enter the national stage under 35 U.S.C. 371, EFS-Web. Unfortunately, this feature was not ready for production and was not deployed in the latest EFS-Web release.
EFS-Web 1.4 and PCT The release of EFS-Web 1.4 on August 17, 2008 will have a number of enhancements that will be useful to filers of national stage and international applications. 1. National Stage enhancements: Applicant submitting initial documents to enter the national stage under 35 U.S.C. 371 will be able to check and edit the international application number before clicking the submit button. 2. Sequence listing enhancements: e-Filers will be able to upload one sequence listing (txt) file up to 100 MB per submission. The sequence listing file must be uploaded separately from other types of files. Sequence listing files that exceed 100MB can be submitted on compact disc via Express Mail. EFS-Web will also display a warning if the sequence listing does not conform to the ST.25 format. 3. Fee Codes: Since Priority Documents are now free of charge; the 8007 Fee Code will be removed from the PCT Calculate Fee screen. The 1708 and 1463 Fee Codes have been added to the PCT Calculate Fee screen. Fee code 1708 is for sequence listing and/or sequence-related table on electronic medium only (PCT AI Section 801). Fee code 1463 is for petitions requiring the petition fee set forth in 37 CFR 1.17(g) (Group II). Other enhancements may be viewed at: http://www.uspto.gov/ebc/portal/enhance14.htm
01 July 2008 Amendments to the PCT Regulations, Administrative Instructions and Other Practice Changes The PCT Regulations and Administrative Instructions have been amended with effect from 01 July 2008. The text of the amendments of the PCT Regulations and Administrative Instructions to which will enter into force on 01 July 2008 are currently available at: www.wipo.int/pct/en/texts/index.htm. Detailed information regarding the 01 July 2008 amendments to the PCT Regulations, Administrative Instructions and other practice changes are available at: www.wipo.int/export/sites/www/pct/en/texts/ppt/2008changes.ppt. Further, the request form (PCT/RO/101) and demand form (PCT/IPEA/401) also have been amended to take into account the 01 July 2008 changes. The forms are currently available at: www.wipo.int/pct/en/forms/index.htm.
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