Patent Law

Black Kettle, Says Pot

By Gary Odom and Jordan Kuhn

The patent office is barking about its brethren offices worldwide. John Doll, acting alpha dog, announced that "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" ... not to mention the countless US applications received where applicant didn't even have a choice.

From the PTO announcement:

Applicants are 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), 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 Off. Gaz. Pat. Office 261 and 265). 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.

Full post as published by The Patent Prospector on March 16, 2009 (boomark / email).