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 to be industrially applicable.“
This assessment is based on the following criteria:
- Novelty: Is the invention new compared to the prior art?
- Inventive step: Is the invention non-obvious to a person skilled in the art?
- Industrial applicability: Can the invention be made or used in any kind of industry?
Additionally, the written opinion may comment on other aspects of the application:
“The written opinion also indicates any defects in the form or content of the international application under the PCT Articles or Regulations. In addition, the written opinion includes any observations that the International Searching Authority wishes to make on the clarity of the claims, the description, and the drawings, or on the question of whether the claims are fully supported by the description.“
This comprehensive evaluation provides valuable guidance to applicants and examiners for further prosecution of the patent application.
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