European Patent Office Clamps the Lid Down
on PCT Applications
Filed by U.S. Tech Industry
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Knobbe Martens Olsen & Bear LLP, San Diego
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This year the European Patent Office announced that beginning March 1, 2002, it
would no longer examine patent applications filed under the Patent Cooperation
Treaty (PCT) by U.S. applicants which relate to telecommunications. In addition,
after that date no EPO search or examination would be conducted on U.S.-originating PCT
applications which relate to business methods or biotechnology.
The Patent Cooperation Treaty allows patent applicants to preserve the right to
obtain foreign patents by filing a single, international application. It also
provides a preliminary, non-binding opinion on patentability while deferring
the significant expenses associated with filing the application in individual
foreign countries or regions. Through the PCT, the applicant obtains a search
for references pertinent to the patentability of the claimed invention. A
preliminary examination of the application can also be requested. Filing foreign
applications through the PCT delays the expensive national stage of foreign
patenting for up to 30 months from the earliest priority date claimed in the
application.
Applicants from the United States (i.e., U.S. citizens or corporations) can file
their PCT applications in either the U.S. Patent and Trademark Office or the
International Bureau in Geneva, Switzerland. In addition, prior to the
announcement discussed below, all U.S. applicants had the option of designating
either the U.S. Patent and Trademark Office or the European Patent Office as the
International Search Authority or the International Examining Authority. U.S.
applicants would frequently designate the European Patent Office for search and
examination so as to obtain a "second opinion" on patentability (in addition to
the examination of the U.S. application) and to streamline the subsequent
examination of the European application.
In response to a deluge of PCT applications from U.S. applicants, the European
Patent Office recently announced that it would no longer conduct an
international examination with respect to any PCT application relating to
telecommunications, business methods or biotechnology filed by a national or
resident of the United States of America in which the Demand for International
Preliminary Examination is filed on or after March 1, 2002. Furthermore, no
search will be conducted for PCT applications relating to business methods or
biotechnology for such applicants where the PCT application is filed on or after
March 1, 2002. Specifically, this announcement relates to PCT applications for
such inventions filed in the U.S. Patent and Trademark Office or International
Bureau in which at least one applicant is a U.S. national or resident and none
of the applicants are nationals or residents of a European Patent Convention
(EPC) contracting state. More details, including the definition of what
constitutes subject matter for which this ruling applies, can be found at
Thus, while U.S. PCT applicants may still be able to obtain a European patent
for such inventions (note that business method patents are not regularly
granted) by filing a national application in the European Patent Office at the
conclusion of the international PCT proceedings, they will no longer be able to
obtain the benefits of having the European Patent Office conduct a preliminary
search (telecommunications excepted) or examination of their applications.
Nonetheless, for telecommunications inventions it is still possible and
desirable for a U.S. applicant to request a search by the European Patent Office
in conjunction with a PCT application. The PCT examination will then have to be
conducted by the U.S. Patent and Trademark Office.
John M. Carson is a patent attorney and partner at Knobbe, Martens, Olson &
Bear, LLP. Mr. Carson can be contacted at 619.687.8632 or jcarson@kmob.com.
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