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Writer's pictureJeremy Rutman

Responding to PCT Written Opinions



When you file a PCT application, you'll get a response consisting of a Written Opinion (WO) and International Search Report (ISR) after three to six months.

The ISR will generally look like this:

and lists what the Examiner thing about the various claims in light of the they found. Above is a typical example where, as you can see from the key at the bottom, the 'X' means a single reference is enough to kill the claim (in the Examiner's opinion, anyway). A 'Y' would mean two or more references must be combined, and the rest mean that Examiner wasn't able to overcome the claim. So in the example above we have claims 1,2,7,8,10,11,16,17 rejected by Examiner while the rest (3-6,9,12-15,18) are accepted. Note this only means the PCT Examiner has accepted these claims; the final word is at the national stage where a national Examiner will make the binding calls.


The full explanation of the Examiner's stance is listed in the WO, a small part of an example being shown below:


Here the Examiner shows whether each claim is considered to be Novel, Inventive, and have Industrial applicability (a.k.a Usefulness). Each claim is considered in a paragraph or more where the Examiner explains why s/he thinks the claim is or is not acceptable.


Esteemed lawyer responds to objections


When you receive the WO during the PCT process, you may have several options for how to proceed, including filing amendments under Article 19 or Article 34, writing an informal response, or choosing to do nothing. Here are the key reasons for and against each option:


1. Filing an Article 19 Amendment

This allows you to amend the claims (but not the description or drawings) after receiving the international search report (ISR) and WOSA, but before the international publication of the PCT application.

Pros:

  • Limited Scope for Amendment: If you only need to make minor adjustments to the claims to address issues raised in the WOSA, Article 19 allows you to fix claim defects without waiting for national phase entry.

  • Public Display of Amendment: These amendments will be published with the international application, which might be helpful for demonstrating patentability to third parties.

  • Cost-effective: It can be cheaper and quicker than engaging in the Chapter II examination under Article 34.

Cons:

  • Claims Only: You cannot amend the description or drawings, which may be necessary if the WOSA raises issues related to the sufficiency of disclosure or the clarity of the description.

  • No Examiner Interaction: There is no direct interaction with the examiner, so you won’t know if your amendments will be considered allowable before entering the national phase.


2. Filing an Article 34 Amendment

This option initiates the Chapter II examination process, where you can amend claims, description, and drawings, and engage in a dialogue with the examiner through a Demand for International Preliminary Examination (IPE).

Pros:

  • Broad Amendments: You can amend not only the claims but also the description and drawings, which might be necessary to overcome objections in the WOSA.

  • Dialogue with Examiner: You get the opportunity to receive an International Preliminary Examination Report (IPER) and discuss the patentability of amended claims before entering the national phase, which may improve your chances of allowance.

  • Improves National Phase Position: A favorable IPER can influence national patent offices during the national phase, leading to faster and cheaper prosecution.

Cons:

  • Cost: Filing an Article 34 amendment is more expensive as it involves paying fees for the Chapter II examination.

  • Time: The process can be slow, and you may not receive an IPER before entering the national phase in some jurisdictions.

  • Redundancy: If you think your claims will be allowable as is in key jurisdictions, an Article 34 amendment may be unnecessary.


3. Writing an Informal Response to the Examiner

In some cases, you can submit an informal response addressing the issues raised in the WOSA without formally amending the application.

Reasons For:

  • Flexible and Quick: It allows you to clarify the examiner’s concerns or correct misunderstandings without the formalities of an Article 19 or 34 amendment.

  • Dialogue: Can sometimes lead to a better understanding of the examiner’s objections without triggering the expense of Chapter II.

Reasons Against:

  • No Formal Impact: Since it’s informal, the response may not be considered when the application enters national phases, and it won't result in a favorable IPER.

  • Limited Use: This approach is often ineffective if the WOSA raises substantial objections, and a more formal route might be necessary to overcome patentability issues.


4. Doing Nothing

You can choose to take no action in response to the WOSA and proceed directly to the national phase.

Pros:

  • Cost-Effective: It saves the costs associated with filing an amendment or initiating Chapter II.

  • Focus on National Phase: If your primary concern is specific national jurisdictions (e.g., the US, Europe), it may be more efficient to address the WOSA objections during the national phase rather than through the international stage.

Cons:

  • Risk at National Phase: National patent offices will likely use the WOSA as a basis for their examination, and without addressing the issues raised, you may face similar objections in each jurisdiction, leading to longer and costlier prosecution.

  • Missed Opportunity for Global Streamlining: A favorable IPER (from Chapter II) could streamline national phase prosecution, potentially saving time and money across multiple countries.


HOW TO DECIDE???

  • Strength of Allowable Claims: If some set of allowable claims cover the core of your invention, and the others are less critical, doing nothing or filing an Article 19 amendment might suffice.

  • Substantial Rejections: If the WOSA raises major issues with core claims (e.g., novelty, inventive step), an Article 34 amendment and examiner interaction might be beneficial.

  • Cost and Time: Your budget will come into play. If you're willing to invest in Chapter II for broader protection before the national phase this can pay off when it comes time to actually deal with the national phase



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