When you select your international search authority and international preliminary examination authority, it is important to understand what subject matter each office is competent to search and examine. For example, the EPO will not research or give an opinion on business method subject matters:
as an International Searching Authority and an International Preliminary Examining Authority, international applications filed by a national or resident of the United States of America with the United States Patent and Trademark Office or the International Bureau as receiving Office, where such applications contain one or more claims relating to the field of business methods, as defined by the following International Patent Classification units:
- G06Q: Data processing systems or methods, specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes; Systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes, not otherwise provided for
- G06Q 10/00: Administration, e.g. office automation or reservations; Management, e.g. resource or project management
- G06Q 30/00: Commerce, e.g. marketing, shopping, billing, auctions or e-commerce
- G06Q 40/00: Finance, e.g. banking, investment or tax processing; Insurance, e.g. risk analysis or pensions
- G06Q 50/00: Systems or methods specially adapted for a specific business sector, e.g. health care, utilities, tourism or legal services
- G06Q 90/00: Systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes, not involving significant data processing
- G06Q 99/00: Subject matter not provided for in other groups of this subclass.
The EPO will also not act as the IPEA unless it did the search as the ISA.
Other patent offices may have other or similar restrictions as ISAs and IPEAs. It is important to understand the limitations of each authority before making your selection.