Here’s a flow diagram showing the use of the International-type search which will be discussed in more detail below:
What is a Written Opinion?
Firstly, let’s consider what a clear written opinion is.
During the international patent pending stage (the PCT patent stage) there is an examination of the newness and inventiveness of the claimed invention. During this examination, the international examiner looks at the available prior art and considers whether or not the invention meets the requirements from novelty and inventive step (of the requirements to be granted a patent).
The examiner’s findings issue in a document called a written opinion. It is called an opinion because it is non-binding, but is persuasive on the patent examiners down the track in each country.
A written opinion is non-binding, but is persuasive on the patent examiners down the track in each country.
Advantages of obtaining a clear written opinion
Obtaining a clear written opinion is highly advantageous for patent applicants because it is highly indicative of being granted a patent in each country down the track.
In general terms, rather than wait for examination in each country down the track (which can take some time) a patent applicant can take advantage of the written opinion process during the international patent pending stage to gain an indication as to the scope of eventual patent protection.
A clear written opinion is highly indicative of being granted a patents in each country down the track.
Therefore, obtaining a clear written opinion is advantageous in that it issues during the international patent pending stage and is indicative of the likely scope of protection in each country down the track. In this way, having a clear written opinion during the international stage can be used to leveraged investment for the technology, or dissuade competitors.
Taking Advantage of the International-type Search
During the PCT international patent application stage, the examiner performs a search of the prior art to uncover the state of the technology prior to the filing date of the patent application. In this way, when you file a PCT patent application, the search is conducted, and the written opinion then issues on the basis of these search results.
However, once a PCT patent application has been filed, it is generally not possible to make amendments to the patent specification. In this way, if the examiner uncovers damaging prior art during the PCT stage, the patent applicant can be limited in terms of options.
Therefore, we always recommend that PCT patent applicants take advantage of the International-type search which is performed prior to filing the PCT patent application. The international type search is the same search that would be done during the PCT stage, but brought forward prior to filing of the PCT patent application.
The International-type search is performed prior to filing the PCT patent application and is a “sneak-peak” as what will happen during subsequent the PCT examination stage.
In this way, the patent applicant can see what prior art documents will be considered during the PCT written opinion stage so as to be able to make amendments to the patent specification so as to distinguish the invention from the prior art so that the patent application proceeds through the PCT stage without problem.
Application to the present case study
In the present case, the patent applicant filed a provisional patent application to establish a filing date for the technology.
Once filed, the patent applicant requested International-type search and received the results from the international examiner about six weeks later.
Once I had obtained the results of the international type search, I was able to view the prior art documents which the examiner had found and ascertain the differences between the present invention and those of the prior art documents.
In this way, I was able to “massage” the claimed invention to distinguish the present invention from the prior art documents. In general terms, one only needs to include one (novel and inventive) feature of difference in the broadest claim of a patent application in order to obtain a patent. In other words, youre invention only needs to differ in one respect (i.e. be an improvement) from what was done before in order to be granted a patent.
Furthermore, when amending the specification in light of the prior art documents received from the international type search, I amended the background section to show the differences between the prior art references and the present invention.
For example, here are excerpts from the background section pointing out the differences between the present invention and the prior art documents:
Once the amendments had been made to the provisional patent application, I subsequently filed the PCT patent application.
Upon receipt of the PCT patent application, the international examiner was able to note that the search and already been conducted (and in fact the patent applicant is granted a discount because of this) and therefore did not re-perform the search, meaning the same documents were relied upon for the written opinion. Then, the examiner was able to see the differences between the present invention and the prior art documents from the background section of the patent and, as a result, granted a clear written opinion in the first instance.
In summary, the International-type search conducted during the provisional patent application stage is a very effective tool for obtaining a clear written opinion in a swift and efficient manner which is an excellent tool for encouraging investors to invest in an idea or technology and to dissuade competitors from seeking to compete.
The International-type search gives patent applicants the advantage of being able to see the documents that will be cited during the PCT patent application stage in advance of filing the PCT patent application, meaning that additional disclosure can still be included into the provisional patent specification, and the claimed invention and background section amended to distinguish the claimed invention from the prior art references.