When is a Written Opinion of the International Searching Authority not required?
A Written Opinion of the International Searching Authority is not required in a specific limited instance, as described in MPEP 1845: “A written opinion of the International Searching Authority is not required in the limited instance where a demand for international preliminary examination and required fees (PCT Rule 69.1(a)) have been filed with the United…
Read MoreWhen is international preliminary examination not required?
International preliminary examination may not be required in certain instances, as outlined in MPEP 1874. Specifically: When the subject matter claimed is not within the scope of what the International Preliminary Examining Authority is required to examine under the Regulations. When the description, claims, or drawings are so unclear that no meaningful opinion can be…
Read MoreWhen is a further written opinion required in international preliminary examination?
A further written opinion is required in international preliminary examination under specific circumstances. According to the MPEP: However, a further written opinion must be prepared if applicant files a response which includes a persuasive argument that the written opinion issued by the International Searching Authority was improper because of a negative opinion with respect to…
Read MoreWhat is a Demand in the context of the Patent Cooperation Treaty (PCT)?
A Demand is a request for international preliminary examination under Chapter II of the Patent Cooperation Treaty (PCT). As stated in MPEP 1864: “The use of the term ‘Demand’ distinguishes Chapter II from the ‘Request’ under Chapter I.” The Demand allows applicants to have their international application examined and potentially obtain a positive international preliminary…
Read MoreHow does the USPTO treat written opinions from other International Searching Authorities?
The United States International Preliminary Examining Authority has a specific policy regarding written opinions from certain International Searching Authorities. According to the MPEP: The United States International Preliminary Examining Authority will treat any written opinion of the International Searching Authority established by the USPTO, EPO, KIPO, IP Australia, Rospatent, ILPO, JPO, or IPOS as the…
Read MoreWhat happens if the USPTO was the International Searching Authority for an international application?
When the USPTO serves as the International Searching Authority (ISA) for an international application, it streamlines the process for international preliminary examination. According to MPEP 1872: “If the USPTO was the International Searching Authority for the international application, the same file used for purposes of the international search will be used for purposes of international…
Read MoreWhat is the internal time limit for the USPTO to prepare the international preliminary examination report?
According to MPEP 1879.01, while the official time limit for establishing the international preliminary examination report is 28 months from the priority date, the USPTO has set an internal deadline: “This time limit is 27 months internally to ensure sufficient time to process, review and mail the report in sufficient time to reach the International…
Read MoreWhen does the International Preliminary Examining Authority start the examination?
According to MPEP 1879.01, the International Preliminary Examining Authority starts the examination when it has received all of the following: The demand Full payment of the handling fee and preliminary examination fee (including any late payment fees) Either the international search report or a declaration that no such report will be established, along with the…
Read MoreWhat standards must a sequence listing comply with in a PCT application?
Sequence listings in PCT applications must comply with specific standards set by the Administrative Instructions. According to MPEP 1877: “the International Preliminary Examining Authority may invite the applicant to furnish such a sequence listing complying with the standard provided for in the Administrative Instructions” This means that the sequence listing must adhere to the format…
Read MoreCan the international preliminary examination start at the same time as the international search?
Yes, under certain conditions, the international preliminary examination can start simultaneously with the international search. MPEP 1879.01 states: “If the national Office or intergovernmental organization that acts as International Searching Authority also acts as International Preliminary Examining Authority, the international preliminary examination may, if that national Office or intergovernmental organization so wishes and subject to…
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