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 MoreWhen 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 MoreHow does the written opinion of the International Searching Authority relate to inventive step assessment?
The written opinion of the International Searching Authority (ISA) follows the same principles for assessing inventive step as the international preliminary examination. MPEP 1878.01(a)(2) states: “The above provisions apply mutatis mutandis to the written opinion of the International Searching Authority. See PCT Rule 43bis.1(b).” This means that the ISA uses the same criteria and approach…
Read MoreHow does the Written Opinion relate to the International Preliminary Report on Patentability?
The Written Opinion of the International Searching Authority has a direct relationship with the International Preliminary Report on Patentability (IPRP), as explained in MPEP 1845: “The written opinion is transmitted to the designated offices in the form of an international preliminary report on patentability if no international preliminary examination report is established under Chapter II…
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 a written opinion in the context of international patent searches?
A written opinion is an essential document produced alongside the international search report during the PCT application process. According to MPEP 1843, the written opinion serves several important purposes: It indicates whether the claimed invention appears to be novel, involve an inventive step (non-obvious), and be industrially applicable. It points out any defects in the…
Read MoreHow does the Written Opinion address defects in the international application?
The Written Opinion addresses defects in the international application in Box No. VII of Form PCT/ISA/237. According to the MPEP, In Box No. VII of Form PCT/ISA/237, defects in the form and content of the international application are identified. These defects can include issues with drawings, description, or claims. The MPEP provides several form paragraphs…
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 is the role of the United States Patent and Trademark Office (USPTO) as an International Searching Authority?
The USPTO, as an International Searching Authority, has two primary functions: Establish international search reports Prepare written opinions for international applications having an international filing date on or after January 1, 2004 According to MPEP 1840, “As such an Authority, the primary functions are to establish (1) international search reports and (2) for international applications…
Read MoreHow do sequence listing issues affect international patent searches and opinions?
Sequence listing issues can significantly impact international patent searches and opinions. The MPEP specifically mentions that a meaningful search or opinion may not be possible when nucleotide and/or amino acid sequence listings are not provided in the required form, language, and manner. As stated in MPEP 1843.03: “For example, the examiner may determine that a…
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