MPEP 1845

1845 Written Opinion of the International Searching Authority[edit | edit source]

PCT Rule 43bis.

Written Opinion of the International Searching Authority

43bis.1.Written Opinion

(a)Subject to Rule 69.1(bbis), the International Searching Authority shall, at the same time as it establishes the international search report, establish a written opinion as to:

(i)whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable;

(ii)whether the international application complies with the requirements of the Treaty and these Regulations in so far as checked by the International Searching Authority.

The written opinion shall also be accompanied by such other observations as these Regulations provide for.

(b)For the purposes of establishing the written opinion, Articles 33(2) to (6), 35(2) and 35(3) and Rules 43.4, 64, 65, 66.1(e), 66.7, 67, 70.2(b) and (d), 70.3, 70.4(ii), 70.5(a), 70.6 to 70.10, 70.12, 70.14 and 70.15(a) shall apply mutatis mutandis.

(c)The written opinion shall contain a notification informing the applicant that, if a demand for international preliminary examination is made, the written opinion shall, under Rule 66.1bis(a) but subject to Rule 66.1bis(b), be considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a), in which case the applicant is invited to submit to that Authority, before the expiration of the time limit under Rule 54bis.1(a), a written reply together, where appropriate, with amendments.

For international applications having an international filing date on or after January 1, 2004, the examiner is required, in most instances, to establish a written opinion on novelty, inventive step, and industrial applicability of the claimed invention at the same time he/she establishes the international search report. 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 designated Offices of information that may be relevant to examination in the national phase. (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 of the PCT). 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 States International Preliminary Examining Authority and the examiner considers all the conditions of PCT Article 34(2)(c)(i) to (iii) to be fulfilled. In this limited instance, a positive international preliminary examination report may be issued. See PCT Rule 69.1(b- bis)).

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 Rule 66.2(b)) and invite a written reply, with amendments where appropriate (PCT Rule 66.2(c)).

1845.01 Preparing the Written Opinion of the International Searching Authority (Form PCT/ISA/237)[edit | edit source]

I. BOX NO. I. — BASIS OF OPINION

When completing Box I, item 1, of Form PCT/ISA/ 237, the examiner must indicate whether or not the opinion has been established on the basis of the international application in the language in which it was filed. If a translation was furnished for the purpose of the search, this must be indicated. With respect to Box I, item 2 of Form PCT/ISA/237, if the opinion has been based on a nucleotide and/or amino acid sequence disclosed and necessary to the claimed invention, the examiner must indicate the type of material (e.g., a sequence listing and/or tables related thereto), the format of the material (e.g., in written format and/or in computer readable form) and the time of filing/furnishing (e.g., contained in the international application as filed, filed together with the international application in computer readable form and/or furnished subsequently to this Authority for the purposes of the search). If more than one version or copy of the sequence listing and/ or table relating thereto is filed, the examiner must indicate whether the applicant has provided the required statement indicating that the information in the subsequent or additional copies are identical to

that in the application as filed or does not go beyond the application as filed.

II. BOX NO. II. — PRIORITY

Box II of Form PCT/ISA/237 is to inform applicant of the status of a request for priority. Where one or more citations of the international search report were published after the earliest priority date, the validity of that earliest priority date requires checking. Where the priority document is one which is in the records of the ISA, it should be obtained from those records. If a copy of the priority document is not available before preparation of the written opinion of the ISA because it has not yet been provided by the applicant, and if that earlier application was not filed with that Authority in its capacity as a national Office or the priority document is not available to that Authority from a digital library in accordance with the Administrative Instructions, the written opinion of the ISA may be established as if the priority had been validly claimed.

If the examiner needs a copy of a foreign priority document, the copy will be supplied on request to the International Bureau (IB) unless the IB has not yet received the priority document, in which case the examiner may invite the applicant to furnish such a copy. See PCT Rule 66.7(a). The examiner may consult with his or her SPRE regarding requesting a copy of the priority document from the IB. If the priority document is not in English, the examiner may invite the applicant to furnish a translation of the priority document within two months of the invitation. See PCT Rule 66.7(b). Box II, item 3, “Additional Observations” may be used to invite applicant to supply a copy of the priority document and/or translation. Preparation of the written opinion by the International Searching Authority should not be delayed to await a response to the invitation. The written opinion of the ISA will ordinarily be established as if the priority claim had been validly claimed even though the copy and/or translation has not been furnished. However, failure to timely furnish a copy of the priority document and/or translation may result in any further written opinion or international preliminary examination report of the International Preliminary Examining Authority being established as if the priority had not been claimed.

If applicant fails to furnish a copy or translation of the earlier application, whose priority has been claimed, check item No. 1 and then check the first box of the subsection if applicant failed to furnish a copy of the earlier application whose priority has been claimed, and check the second box of the subsection if applicant failed to furnish a translation of the earlier application whose priority has been claimed.

When the claim for priority has been found invalid (e.g., the claimed priority date is more than one year prior to the international filing date and the notification under PCT Rule 26bis.2(b) has been provided or all claims are directed to inventions which were not described and enabled by the earlier application), check item No. 2 in Box II and indicate why the claim for priority has been found invalid following item No. 3 “Additional observations”.

III. BOX NO. III. — NON-ESTABLISHMENT OF OPINION ON NOVELTY, INVENTIVE STEP AND INDUSTRIAL APPLICABILITY

Box III of Form PCT/ISA/237 is intended to cover situations where some or all claims of an application are so unclear or inadequately supported by the description that the question of novelty, inventive step (nonobviousness), and industrial applicability cannot be considered, or where the international application or claims thereof relate to subject matter for which it is not required to establish a written opinion concerning novelty, inventive step and industrial applicability, or where no international search report has been established for the claims.

If some or all of the claims of an application relate to subject matter for which it is not required to establish a written opinion concerning novelty, inventive step and industrial applicability, check the appropriate box, indicate which claims relate to that subject matter and specify the reasons.

If some or all of the claims of an application are so unclear that no meaningful opinion could be formed, check the appropriate box, indicate which claims are unclear and specify the reasons.

If some or all of the claims are so inadequately supported by the description that no meaningful opinion could be formed, check the appropriate box.

If no international search report has been established for certain claims, check the appropriate box and indicate the claim numbers.

If the nucleotide and/or amino acid sequence listing does not comply with Annex C of the Administrative Instructions, the examiner must indicate whether the written form and/or the computer readable form is not in compliance and the reason for the non-compliance. Further, if tables related to the sequence listing are included as part of the international application, and these tables fail to comply with the technical requirements of Annex C of the Administrative Instructions, the examiner must indicate this in Box III.

IV. BOX NO. IV. — LACK OF UNITY OF INVENTION

Box IV of Form PCT/ISA/237 should be used by the examiner to notify applicant that lack of unity has been found.

If, in response to a lack of unity of invention, applicant paid additional fees for additional inventions, the examiner should check the first box under subsection 1.

If the additional fees were paid under protest, the examiner should check the second box under subsection 1.

If applicant neither restricted nor paid additional fees in reply to the lack of unity of invention, the examiner should check the third box under subsection 1.

Subsection 2 of Box IV is to be completed if the examiner determines that unity of invention is lacking but chooses not to invite the applicant to restrict or pay additional fees.

If a lack of unity exists, the examiner would mark the second box under subsection 3. However, since the reasons for the lack of unity have already been set forth on the simultaneously issued international search report, the examiner can simply state that the reason the requirement of unity of invention is not complied with is set forth in the international search report. The first box under subsection 3 would never be marked.

Subsection 4 is used by the examiner to indicate which parts of the application form the basis of the opinion after the lack of unity of invention has been explained.

V. BOX NO. V. — REASONED STATEMENT WITH REGARD TO NOVELTY, INVENTIVE STEP, AND INDUSTRIAL APPLICABILITY OF CLAIMS

In Box V of Form PCT/ISA/237, the examiner must list in summary form all claims with regard to the criteria of novelty (N), inventive step (IS), and industrial applicability (IA). For definitions of novelty, inventive step, and industrial applicability see MPEP §§ 1878.01(a)(1), 1878.01(a)(2), and 1878.01(a)(3), respectively.

Box V is the main purpose of the written opinion. All claims without fatal defects are treated on the merits in Box V as to novelty, inventive step (nonobviousness) and industrial applicability.

The treatment of claims in Box V is similar in format to an Office action in a U.S. national patent application except that the words “rejection” and “patentability” are never used in a written opinion. On the international level, all written opinions are nonbinding and a patent does not issue; what does issue is an international preliminary examination report (IPER), which is nonbinding on the elected States.

Examiner statements in Box V can be positive or negative. If the claims define over the prior art and meet the test of novelty, inventive step (nonobviousness) and industrial applicability, a statement equivalent to detailed reasons for allowance in a corresponding U.S. national application should be provided, indicating how the claims meet the tests of novelty, inventive step and industrial applicability. Form paragraphs 18.04 and 18.04.01 may be used for this purpose.

¶ 18.04 Meets Novelty and Inventive Step

Claim [1] the criteria set out in PCT Article 33(2)-(3), because the prior art does not teach or fairly suggest [2].

Examiner Note:

1.In bracket 1, pluralize “claim” if needed, insert claim no.(s), and insert the verb --meet-- or --meets--, as appropriate.

2.In bracket 2, insert the details of the claimed subject matter that render it unobvious over the prior art.

3.If the claims also meet the industrial applicability criteria set out in PCT Article 33(4), this form paragraph should be followed by form paragraph 18.04.01.

4.If the claims do not meet the industrial applicability criteria set out in PCT Article 33(4), this form paragraph should be followed by form paragraph 18.03.

¶ 18.04.01 Meets Industrial Applicability

Claim [1] the criteria set out in PCT Article 33(4), and thus [2] industrial applicability because the subject matter claimed can be made or used in industry.

Examiner Note:

1.In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --meet-- or -- meets--, as appropriate.

2.In bracket 2, insert --have-- or --has--, as appropriate.

3.If the claims meet all of the requirements of PCT Article 33(2)-(4), use form paragraph 18.04 before this form paragraph to provide positive statements for novelty and inventive step under PCT Article 33(2)-(3).

4.If the claims have industrial applicability but lack novelty and inventive step, use this form paragraph and additionally use form paragraph 18.01.

5.If the claims have industrial applicability and novelty but lack inventive step, use this form paragraph and additionally use one or more of form paragraphs 18.02, 18.02.01 and 18.02.02, as appropriate.

6.If the claims do not have industrial applicability, use form paragraph 18.03 instead of this form paragraph.

If, on the other hand, it is the opinion of the examiner that some or all claims lack novelty, inventive step, or industrial applicability, specific reasons must be given similar to those used in U.S. national applications. If the claims lack inventive step over a combination of references, the reasons must explain why one of ordinary skill in the art would have been motivated to combine the teachings of the applied references.

Form paragraphs 18.01, 18.02, 18.02.01, 18.02.02, and 18.03 may be used, as appropriate, to explain the negative statements listed in Box V.

¶ 18.01 Lacks Novelty

Claim [1] novelty under PCT Article 33(2) as being anticipated by [2].

Examiner Note:

1.In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.

2.In bracket 2, insert name of prior art relied upon.

¶ 18.02 Lacks Inventive Step - One Reference

Claim [1] an inventive step under PCT Article 33(3) as being obvious over [2]. [3]

Examiner Note:

1.In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.

2.In bracket 2, insert name of prior art relied upon.

3.In bracket 3, add reasoning.

¶ 18.02.01 Lacks Inventive Step - Two References

Claim [1] an inventive step under PCT Article 33(3) as being obvious over [2] in view of [3]. [4]

Examiner Note:

1.In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.

2.In bracket 2, insert name of PRIMARY prior art relied upon.

3.In bracket 3, insert name of SECONDARY prior art relied upon.

4.In bracket 4, add reasoning.

¶ 18.02.02 Lacks Inventive Step - Additional Reference

Claim [1] an inventive step under PCT Article 33(3) as being obvious over the prior art as applied in the immediately preceding paragraph and further in view of [2]. [3]

Examiner Note:

1.This form paragraph may follow either 18.02 or 18.02.01.

2.In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.

3.In bracket 2, insert name of additional prior art relied upon.

4.In bracket 3, add reasoning.

¶ 18.03 Lacks Industrial Applicability

Claim [1] industrial applicability as defined by PCT Article 33(4). [2]

Examiner Note:

1.In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.

2.In bracket 2, add reasoning.

Examiners are encouraged to indicate any amendments which applicant could present which would avoid a negative statement in the international preliminary examination report in the event that applicant chooses to file a demand.

VI. BOX NO. VI. — CERTAIN DOCUMENTS CITED

Since all documents cited at the time of establishment of the written opinion will be listed on the simultaneously established search report, there is no need to also list them on the written opinion, and as such this item should be left blank.

VII. BOX NO. VII. — CERTAIN DEFECTS IN THE INTERNATIONAL APPLICATION

In Box VII of Form PCT/ISA/237, defects in the form and content of the international application are identified.

Examples of defects that would be listed in Box VII are:

(A)Informalities such as misplaced and/or omitted drawing numerals, misspelled words, grammatical errors, etc.

(B)Improper multiple-dependent claims (PCT Rule 6.4) if not indicated under Box III.

VIII. BOX NO. VIII. — CERTAIN OBSERVATIONS ON THE INTERNATIONAL APPLICATION

In Box VIII, the examiner notifies the applicant of observations made as to the clarity of the claims, the description, the drawings, or on the question whether the claims are fully supported by the description.

If the claims, the description, or the drawings are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the question of novelty, inventive step (nonobviousness) or industrial applicability, the applicant is so informed in Box III. See PCT Article 34(4)(a)(ii). Reasons for the examiner’s opinion that the claims, description and drawings, etc., lack clarity must also be provided.

If the above situation is found to exist in certain claims only, the provisions of PCT Article 34(4)(a)(ii) shall apply to those claims only.

If the lack of clarity of the claims, the description, or the drawings is of such a nature that it is possible to form a meaningful opinion on the claimed subject matter, then it is required that the examiner consider the claims and render a written opinion on novelty, inventive step, and industrial applicability in Box V.

Since the claims of an international application are not subject to a rejection on either art or indefiniteness consistent with U.S. practice, observations by the examiner with regard to clarity of the claims, the description and the drawings will be treated in the form of an objection in the written opinion in Box VIII.

The following form paragraphs may be used in Box VIII, “Certain observations on the international application,” of Form PCT/ISA/237 for noting objections which are substantive rather than merely technical in nature.

IX. TIME TO REPLY

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 the mailing of the international search report and the written opinion or before the expiration of 22 months from the priority date, whichever expires later.

X. AUTHORIZED OFFICER

Pursuant to PCT Rules 43bis.1 and 70.14, the written opinion of the International Searching Authority must indicate the name of the officer of the International Searching Authority responsible for the written opinion, i.e., the “authorized officer.” An “authorized officer” is the person who actually performed the search work and prepared the search report and the written opinion, or another person who was responsible for supervising the search and the establishment of the written opinion. See Administrative Instructions Section 514. Thus, an examiner need not have signatory authority in order to be named as an authorized officer on the written opinion. However, the “file copy” of the written opinion must be signed by an examiner having at least partial signatory authority.

1845.02 Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority, or the Declaration (Form PCT/ISA/ 220)[edit | edit source]

The examiner completes the Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority, or Declaration (Form PCT/ISA/220) upon completion of the International Search Report (Form PCT/ISA/ 210) or the Declaration of Non-Establishment of the International Search Report (Form PCT/ISA/203) and, for applications filed on or after January 1, 2004, completion of the Written Opinion of the International Searching Authority (Form PCT/ISA/237). The Form PCT/ISA/220 serves as a cover letter for the PCT/ ISA/210 or PCT/ISA/203 and for the PCT/ISA/237.

When processing an application having an international filing date filed prior to January 1, 2004, the examiner should make sure the Form PCT/ISA/220 being issued is the version of the form dated April 2002 and entitled “Notification of Transmittal of the International Search Report or the Declaration.”

I. ADDRESS FOR CORRESPONDENCE

The address for correspondence is taken from the request (Form PCT/ISA/101). When an agent represents the applicant, the address for correspondence is listed in Box No. IV of the PCT request Form. For applicants processing their own applications, the address for correspondence may be listed in Box No. II of the request Form. However, where PALM or the correspondence on file shows any changes in the applicant or address for correspondence effected under PCT Rule 92bis, the later address is used.

II. APPLICANT

When there is more than one applicant in respect of the international application, only the first mentioned of these on the request Form is indicated in the international search report. Other applicants, if any, are indicated by the words “et al” following the first applicant’s name. The first mentioned applicant is indicated in Box No. II of the request Form, a second applicant is listed in Box No. III; further applicants are listed on the continuation sheet if there are more than two applicants. Company names are written in capital letters; for personal names the family name is given first in capital letters and the given names are in mixed case. This helps to identify the family name.