How can later publications be used to show the level of ordinary skill in the art?
Later publications, which do not qualify as prior art due to their post-dating of the claimed invention, can still be valuable in patent examination. According to MPEP 2124: “References which do not qualify as prior art because they postdate the claimed invention may be relied upon to show the level of ordinary skill in the…
Read MoreHow 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 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 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 MoreWhat role do analogous arts play in patent searches?
What role do analogous arts play in patent searches? Analogous arts play a crucial role in patent searches by expanding the scope of relevant prior art. The MPEP 904.02 states: “The search should include analogous arts though the inventor may have been unaware of such art.” This principle is important because: It helps identify non-obvious…
Read MoreWhat is the relevant date for considering inventive step in PCT applications?
The relevant date for considering inventive step in PCT applications is specified in PCT Rule 65.2. According to MPEP 1878.01(a)(2): “For the purposes of Article 33(3), the relevant date for the consideration of inventive step (non-obviousness) is the date prescribed in Rule 64.1.” Rule 64.1 generally establishes the international filing date as the relevant date…
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 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 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 More