What must be included in the Written Opinion of the International Searching Authority?
The Written Opinion of the International Searching Authority must include specific elements as mandated by MPEP 1845: “The applicant must be notified in the written opinion of the defects found in the application. The examiner is further required to fully state the reasons for his/her opinion (PCT Rules 66.1bis and 66.2(b)) and invite a written…
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 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 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 MoreWhen is the international search report and written opinion typically established in a PCT application?
The establishment of the international search report and written opinion is a critical step in the PCT process. According to MPEP 1842: “As provided in PCT Rule 42 and PCT Rule 43bis, the time limit for establishing the international search report (or a declaration that no international search report will be established) and written opinion…
Read MoreWhat is the relevance of the novelty definition to the written opinion of the International Searching Authority?
The novelty definition provided in PCT Article 33(2) is also applicable to the written opinion of the International Searching Authority. This is explicitly stated in PCT Rule 43bis.1(b), which states that the provisions of Article 33(2)-(6) apply mutatis mutandis to the written opinion. This means that when the International Searching Authority prepares its written opinion…
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 IPEA/US handle the written opinion of the International Searching Authority?
The United States International Preliminary Examining Authority (IPEA/US) generally considers the written opinion of the International Searching Authority (ISA) to be the first written opinion of the IPEA. As stated in the MPEP: The United States International Preliminary Examining Authority (IPEA/US) will consider the written opinion of the International Searching Authority to be the first…
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…
Read MoreWhat is the function of the International Searching Authority (ISA) in the PCT system?
The International Searching Authority (ISA) plays a critical role in the PCT system by conducting prior art searches and providing a written opinion on the patentability of the claimed invention. According to the MPEP, The basic functions of the International Searching Authority (ISA) are to conduct a prior art search of inventions claimed in international…
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