What is the scope of subject matter examined in international preliminary examination?
The scope of subject matter examined in international preliminary examination is broad but has some limitations. According to MPEP 1874: “It should be noted that subject matter which is normally examined under U.S. national procedure should also be examined as an International Preliminary Examining Authority.” However, there are some important considerations: Subject matter not searched…
Read MoreWhat is the purpose of the Written Opinion in the PCT process?
The Written Opinion serves multiple purposes in the Patent Cooperation Treaty (PCT) process, as outlined in MPEP 1845: “The international search report and written opinion together serve to inform the International Preliminary Examining Authority of the documents and arguments necessary to complete the relevant assessments if international preliminary examination is demanded, and to inform the…
Read MoreWhat is the purpose of a top-up search in international preliminary examination?
A top-up search is conducted by the International Preliminary Examining Authority (IPEA) to identify additional prior art that has been published or become available after the establishment of the international search report. The main purpose is to discover intermediate prior art, such as patent applications published after the filing or valid priority date of the…
Read MoreWhat is the purpose of notifying the International Bureau about a Demand for International Preliminary Examination?
The purpose of notifying the International Bureau about a Demand for International Preliminary Examination is to ensure proper communication and coordination in the international patent application process. According to MPEP 1869, the International Preliminary Examining Authority is responsible for this notification: “The International Preliminary Examining Authority, pursuant to PCT Rule 61, promptly notifies the International…
Read MoreWhat is considered prior art for international preliminary examination?
According to MPEP 1878.01(a), prior art for international preliminary examination is defined in PCT Rule 64.1(a) as: “everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) … provided that such making available occurred prior to the relevant date.“ The relevant date is typically the…
Read MoreWhat is the time limit for responding to the Written Opinion of the International Searching Authority?
The MPEP provides clear guidance on the time limit for responding to the Written Opinion of the International Searching Authority. It states: If, in response to the written opinion of the International Searching Authority (Form PCT/ISA/237), applicant wishes to file a demand and amendments and/or arguments, the time period for response is 3 months from…
Read MoreWhat happens if a PCT application lacks a required sequence listing during international preliminary examination?
If the International Preliminary Examining Authority (IPEA) finds that a PCT application requires a sequence listing but lacks one, they may take action. According to MPEP 1877: “If the International Preliminary Examining Authority finds that the international application contains disclosure of one or more nucleotide and/or amino acid sequences that, pursuant to the Administrative Instructions,…
Read MoreWhat is the purpose of Section 605 of the PCT Administrative Instructions?
Section 605 of the PCT Administrative Instructions outlines the file usage for International Preliminary Examination. Specifically, it states: “Where the International Preliminary Examining Authority is part of the same national Office or intergovernmental organization as the International Searching Authority, the same file shall serve the purposes of international search and international preliminary examination.” This means…
Read MoreHow does PCT Rule 65 affect the assessment of inventive step?
PCT Rule 65 provides guidance on how to approach prior art when assessing inventive step. According to MPEP 1878.01(a)(2): “For the purposes of Article 33(3), the international preliminary examination shall take into consideration the relation of any particular claim to the prior art as a whole. It shall take into consideration the claim’s relation not…
Read MoreWhat is PCT Rule 61 and how does it relate to Demand notifications?
PCT Rule 61 is a regulation within the Patent Cooperation Treaty that governs the notification of the Demand for International Preliminary Examination. MPEP 1869 references this rule in the context of Demand notifications: “The International Preliminary Examining Authority, pursuant to PCT Rule 61, promptly notifies the International Bureau and the applicant of the filing of…
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