How does the written opinion assess the patentability of an invention?
The written opinion, issued along with the international search report, provides a preliminary and non-binding assessment of the patentability of the claimed invention. According to MPEP 1843, the written opinion evaluates several key aspects: “The written opinion indicates whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and…
Read MoreWhat is the Written Opinion of the International Searching Authority?
The Written Opinion of the International Searching Authority is a document established by an examiner alongside the international search report. It provides an assessment of the claimed invention’s novelty, inventive step, and industrial applicability. As stated in MPEP 1845: “The examiner is required, in most instances, to establish a written opinion on novelty, inventive step,…
Read MoreWhat is the significance of Box No. V in Form PCT/IPEA/408?
Box No. V in Form PCT/IPEA/408 is a crucial part of the written opinion of the International Preliminary Examining Authority (IPEA). According to the MPEP: In Box No. V, the examiner must list in summary form all claims with regard to the criteria of novelty (N), inventive step (IS), and industrial applicability (IA), and should…
Read MoreHow does the Written Opinion address novelty, inventive step, and industrial applicability?
The Written Opinion addresses novelty, inventive step, and industrial applicability in Box No. V of Form PCT/ISA/237. The MPEP states: Examiner statements in Box No. V can be positive or negative. If the claims define over the prior art and meet the test of novelty, inventive step (nonobviousness) and industrial applicability, a positive statement equivalent…
Read MoreWhen might the ISA not establish an opinion on novelty, inventive step, and industrial applicability?
The International Searching Authority (ISA) may decide not to establish an opinion on novelty, inventive step, and industrial applicability for certain claims in specific circumstances. According to the MPEP, these circumstances include: The international application relates to subject matter for which the ISA is not required to establish a written opinion The description, claims, or…
Read MoreWhat is meant by “industry” in the context of industrial applicability for patents?
In the context of industrial applicability for patents, the term “industry” is interpreted very broadly. As stated in PCT Article 33(4): “‘Industry’ shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.” This broad interpretation means that “industry” is not limited to manufacturing or traditional industrial sectors.…
Read MoreHow does industrial applicability apply to the Written Opinion and International Preliminary Examination Report?
The concept of industrial applicability is crucial in the preparation of both the Written Opinion of the International Searching Authority and the International Preliminary Examination Report. According to PCT Rule 43bis.1(b), the provisions for industrial applicability outlined in PCT Article 33(4) apply equally to these documents: “The above provisions apply mutatis mutandis to the written…
Read MoreWhat is industrial applicability in the context of international patent applications?
Industrial applicability is a key criterion in the assessment of international patent applications. According to PCT Article 33(4), industrial applicability is defined as follows: “For the purposes of the international preliminary examination, a claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense)…
Read MoreWhat are the requirements for describing the industrial applicability of an invention in a patent application?
Describing the industrial applicability of an invention is an important aspect of a patent application, especially for international applications under the Patent Cooperation Treaty (PCT). The MPEP 1823 provides guidance on this matter: “The description should indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which…
Read MoreWhat is the significance of industrial applicability in the patent examination process?
Industrial applicability is a crucial criterion in the patent examination process, particularly for international applications under the Patent Cooperation Treaty (PCT). Its significance lies in ensuring that patents are granted for inventions that have practical utility and can contribute to technological advancement. As outlined in PCT Article 33(4) and applied through PCT Rule 43bis.1(b), industrial…
Read More