INTERNATIONAL TREATIES
PCT
Withdrawal by the UNITED STATES OF AMERICA of the reservation concerning Chapter II PCT (International Preliminary Examination)
1. On 1 April 1987, the United States of America notified1, under PCT Article 64(6)(b), the withdrawal of its declaration that it shall not be bound by the provisions of Chapter II of the PCT. Thus, the United States of America will become bound by Chapter II of the PCT on 1 July 1987.
The United States Patent and Trademark Office (USPTO) specified the USPTO and the European Patent Office (EPO) as competent International Preliminary Examining Authorities (IPEA) for international applications filed with the USPTO, at the option of the applicant. However, the specification of the EPO as IPEA is subject to the following conditions:
(a) for a period of three years beginning 1 July 1987, the EPO will process each year no more than 500 demands for international preliminary examination based on international applications filed with the USPTO.
(b) A demand for international preliminary examination can only be made, if it is based on an international application filed with the USPTO for which the EPO acts or has acted as an International Searching Authority2.
2. This notice sets out the procedures which will be introduced to monitor the number of demands for international preliminary examination received by the EPO and, in particular, to ensure that applicants filing the 501st and subsequent demands suffer no loss of rights.
2.1 The USPTO will accept any demands beyond the limit of 500 filed with the EPO by United States applicants.
2.2 The EPO will inform the USPTO on a regular basis of the cumulative total of demands received in a given year. Applicants will be able to telephone either the EPO (No. (089) 2399-2423) or the USPTO (No. (703) 557-2003) at any time to find out how much of the “quota” of 500 has been used up.
On receipt of the 501st and further demands, the EPO will immediately inform the USPTO. The applicants will then be contacted by the USPTO for further processing of the demand. Moreover, the EPO will refund fees already paid by such applicants to the EPO; it will also indicate that only the USPTO is competent to receive the demands and to establish the international preliminary examination report and that the demand is being forwarded to the USPTO.
The EPO will indicate the date of receipt of the demand on the demand and promptly forward it to the USPTO for further processing. The EPO will be considered to be the agent of the USPTO for the purposes of receiving and dating these demands.
2.3 Applicants are recommended to take notice of the Information for PCT Applicants concerning the procedure before the EPO as Preliminary Examining Authority published in OJ EPO 1986, 441.
Furthermore, the attention of applicants is drawn to the requirement of the United States of America that the international preliminary examination report be translated into English by the International Bureau if it has been drawn up in another language. This must be considered when applicants pay the handling fee. For further details, see OJ EPO 1986, 441, item 6.
1 See PCT Gazette No. 09/1987, p. 1651.
2 Article 3(2) of the Agreement between WIPO and the EPO under the PCT, OJ EPO 1985, 320. See also OJ EPO 1982, 323.