Hi all,
This is my first patent. I am not a lawyer and have not had any legal help. For the present time I am trying to go it alone. I would greatly appreciate some advice on how I should proceed.
I filed my patent with PCT, an international application. I have received an international search report and written opinion. I am now trying to decide how to proceed.
The written opinion cites some defects in my application. These are as follows:
1. Prior art has been found in the international search which have not been cited in the Description.
2. An amendment to claims is suggested in light of the prior art - PCT rules 6.3b(i) and (ii) where I have been instructed to split my claims into what exists in the prior art and what is characterized by my invention. The examiner also deems my invention as not having an 'inventive step'.
On item 1, I would like to include these prior art in my Descriptions and discuss them, without making any changes to the descriptions of my invention. However Article 19 of the PCT (of which the deadline now approaches) only allows changes to claims. So how do I incorporate the results of the search report and discuss these without amending the Descriptions?
On item 2, I believe the examiner is incorrect in his comparison of certain prior art with mine. Whilst there are similarities in the prior art inventions and my own, the purpose and function of the two are different. I intend to emphasize this different by including in my claims an additional 'whereby', in which I emphasize the function of my invention thereby differentiating it from existing art.
My question is: How important is the written opinion. Can it be changed? If so should I seek to change it now that the International preliminary examination is done (with receiving search report and written opinion)?