MPEP Q & A 166: Further Written Opinion Established by the International Preliminary Examining Authority

mpep-podcast-800

Question:

Name one item any further written opinion established by the International Preliminary Examining Authority should set forth.

Answer:

Any further written opinion established by the International Preliminary Examining Authority should set forth, as applicable:

  • (A) Any defects in the international application concerning subject matter which is not required to be examined or which is unclear or inadequately supported;
  • (B) Any negative findings with respect to any of the claims because of a lack of novelty, inventive step (non-obviousness) or industrial applicability;
  • (C) Any defects in the form or contents of the international application;
  • (D) Any finding by the examiner that an amendment goes beyond the disclosure in the international application as originally filed;
  • (E) Any observation which the examiner wishes to make on the clarity of the claims, the description, the drawings or to the question whether the claims are fully supported by the description;
  • (F) Any decision by the examiner not to carry out the international preliminary examination on a claim for which no international search report was issued; or
  • (G) If the examiner considers that no acceptable nucleotide and/or amino acid sequence listing is available in a form that would allow a meaningful international preliminary examination to be carried out.

Chapter Details:

The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers the patent cooperation treaty.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1860 of the MPEP.  The following is a brief summary of section 1860.

1860 International Preliminary Examination Procedure

This section covers the procedure for international preliminary examination.  It also covers when a further written opinion should be prepared by the examiner. This includes times when applicant files a response which includes a persuasive argument that the written opinion issued by the International Searching Authority was improper because of a negative opinion with respect to a lack of novelty, inventive step (non-obviousness) or industrial applicability; and which results in the examiner considering any of the claims to lack novelty, inventive step (non-obviousness) or industrial applicability based on new art not necessitated by any amendment.