What is the purpose of Form PCT/ISA/237?
Form PCT/ISA/237 is used for preparing the Written Opinion of the International Searching Authority. The Written Opinion provides an initial, non-binding opinion on the patentability of the claimed invention. As stated in the MPEP, Box No. V is the main purpose of the written opinion. All claims without fatal defects are treated on the merits…
Read MoreHow does the PCT handle applications related to computer programs?
The Patent Cooperation Treaty (PCT) has specific provisions for handling applications related to computer programs. According to MPEP 1843.02, which cites PCT Rule 39: “No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following: … (vi) computer programs…
Read MoreWhat is an “earlier search” in the context of PCT applications?
An “earlier search” in the context of PCT applications refers to a previous international, international-type, or national search carried out by the same or another International Searching Authority (ISA) or by a national Office. Applicants can request the ISA to consider the results of these earlier searches when conducting the international search for their current…
Read MoreWhat documents must be submitted when requesting consideration of an earlier search?
When requesting consideration of an earlier search in a PCT application, the applicant generally needs to submit certain documents. According to MPEP 1819, which cites PCT Rule 12bis.1(a): “The applicant shall, subject to paragraphs (c) to (f), submit to the receiving Office, together with the international application, a copy of the results of the earlier…
Read MoreAre there any exceptions to submitting copies of earlier search results or applications?
Yes, there are several exceptions to the requirement of submitting copies of earlier search results or applications when requesting consideration of an earlier search in a PCT application. According to MPEP 1819, which cites PCT Rule 12bis.1, the following exceptions apply: Same Office Exception: “Where the earlier search was carried out by the same Office…
Read MoreWhat happens if lack of unity of invention is found in a PCT application?
If the International Searching Authority finds that an international application lacks unity of invention, the following steps are taken according to MPEP 1850: The applicant is informed of the lack of unity of invention through a communication. The applicant is invited to pay additional search fees for the additional inventions. The invitation specifies the reasons…
Read MoreWhat issues can prevent the formation of a meaningful opinion in international patent applications?
For international patent applications filed on or after January 1, 2004, several issues can prevent the formation of a meaningful opinion on novelty, inventive step (non-obviousness), or industrial applicability. According to PCT Rule 43bis.1(b) and PCT Rule 66.1(e), these issues include: Unclear description, claims, or drawings Claims inadequately supported by the description Improperly formatted nucleotide…
Read MoreHow does the ISA handle lack of unity of invention in PCT applications?
How does the ISA handle lack of unity of invention in PCT applications? When the International Searching Authority (ISA) identifies a lack of unity of invention in a PCT application, it follows a specific procedure. According to MPEP 1850: “If the International Searching Authority finds that the international application does not comply with the requirement…
Read MoreWhen can an International Searching Authority refuse to establish a search report?
An International Searching Authority can refuse to establish a search report if it considers that the description, claims, or drawings fail to comply with prescribed requirements to such an extent that a meaningful search cannot be carried out. This is stated in PCT Article 17(2)(a)(ii), which says: “If the International Searching Authority considers that the…
Read MoreWhat are the main procedural steps for an international application in the International Searching Authority?
According to MPEP 1840, the main procedural steps for any international application in the International Searching Authority are: Making of the international search (PCT Article 15) Preparing of the international search report (PCT Article 18 and PCT Rule 43) For international applications having an international filing date on or after January 1, 2004, preparing a…
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