What 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 and/or amino acid sequence listings
- Improper multiple dependent claims
The MPEP states: “If the International Searching Authority considers that the description, claims, or drawings are so unclear, or the claims are so inadequately supported by the description that no meaningful opinion can be formed on the novelty, inventive step (non-obviousness), or industrial applicability of the claimed invention, the Authority shall not go into these issues in its written opinion with regard to the claims so affected.”
In such cases, the Authority may not provide a written opinion on these aspects of patentability for the affected claims.
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