When is a further written opinion issued during international preliminary examination?
A further written opinion should be issued when:
- The applicant provides a persuasive argument that the written opinion from the International Searching Authority was improper regarding novelty, inventive step, or industrial applicability.
- The examiner considers any claims to lack novelty, inventive step, or industrial applicability based on new art not necessitated by amendments.
According to the MPEP:
Any further written opinion established by the International Preliminary Examining Authority should set forth, as applicable: (A) Any defects in the international application as described in PCT Article 34(4) concerning subject matter which is not required to be examined or which is unclear or inadequately supported;
The further written opinion is prepared on Form PCT/IPEA/408 and typically allows a 2-month reply period for the applicant.
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