Significance of Written Opinion and Alternatives with Applicants to Handle it.

Introduction

When a PCT international application is filed, the designated International Search Authority (ISA) establishes an International Search Report (ISR) and a Written Opinion (WO). This article emphasizes the significance of WO and the various alternatives available to the applicant on receiving the WO.

The international search is carried out with the primary goal of finding out prior arts. A detailed analysis of the international search can be found in a non-binding Written Opinion for assessing the potential patentability of the invention. The ISR along with the WO are transmitted to the applicant no later than 16 months from the priority date. They can be transmitted even before in cases when there is a very short or no interval between the first filing and the international filing. Upon investigating the international application, if the ISA finds that the application contains excluded subject matter, more than one invention is claimed, or the claims, together with the description or drawings, fall short of performing a meaningful search, the ISA may issue a declaration of non-establishment of ISR under PCT Article 17(2a).

Alternatives To Handle WO

Upon receiving an ISR and a WO, some options as listed below are available to the applicant, and each option has its advantages and disadvantages:

• The applicant may choose not to respond to the WO. This usually is a good idea if the WO contains minor objections that can be resolved in the national phase application.

• If the applicant receives objections on substantive grounds, then one may choose to file for claim amendments along with informal comments, if any, with the International Bureau under Article 19, within 2 months from the date of transmitting the ISR or 16 months from the priority date, whichever expires later. Filing an amendment is beneficial to demonstrate the strength of the patent and to inform the potential infringer of the scope of protection sought. Filing of informal comments also allows the applicant to present his views or rebut the WO on record if an International Preliminary Examination is not requested. No further comments or rebuttals will be made by ISA in response to the applicant’s comments.

• To be more thorough, the applicant can also opt for one or more supplementary international searches (SIS) from the ISA on top of the one that the applicant had initially filed for international search. The SIS will help in expanding the linguistic and technical scope of discovering prior art by conducting an in-depth search.
• If the applicant receives a negative WO, then a demand for further examination, known as an “International Preliminary Examination” (IPA), can be filed along with the amendments or informal comments to obtain a more positive International Preliminary Report on Patentability (IPRP), either within 3 months from the date of transmittal or within 22 months from the priority date, whichever expires later. An IPA is an optional and non-binding second evaluation on the invention’s patentability carried out by an International Preliminary Examining Authority (IPEA), and the results of such examination are shared with the applicant by way of IPRP. Though the IPRP is not binding on the national patent offices, it sure is of persuasive value while prosecuting the national phase application.
• If a request for further examination is not made, then the WO will form the basis for IPRP and it will be provided to the national patent office, which will consider the report, though it is not binding. Here is where the importance of WO lies. The ISR and WO analyze the chances of obtaining a patent in the PCT contracting states. If there are several objections, the applicant can accordingly make some amendments and make it distinguishable from the existing prior art or even withdraw from filing at the national phase before it is published.

Vedant Pujari, Partner

Shashank Raj, Senior Associate, Patents and Designs