PCT: Received int search report and writ. opinion

[Shahmatt]

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)?

[Brad]

Your questions are good but a bit too specific for me to try and answer and I am getting ready to head out on vacation for the next week so I don't have much time right now.

In general, every PCT search report I have seen has found prior art and has claimed there is no "inventive step" so I would not worry too much about that.  Please however take your time to review the prior art found by the searcher to make sure there is really a difference between your invention and the ones found by the PCT search.

*remember, the PCT is really just a big placeholder and before your PCT expires you will have to file in each country where you want patent protection (e.g. USA, Europe, Candada, etc.).    Most people do not spend the time or money to respond to the search report and you do not have to do this.  Rather, you can take what you have learned from the search and use that to structure your claims when it comes time to file in the USA and other countries to possibly overcome that prior art.

Bottom line, there is nothing that you MUST do now and you can simply not respond to the search report. 

[Shahmatt]

Thank you for the useful information. I hope you have a good vacation.

[Shahmatt]

Hi,

I need some further advice. I would appreciate it if you could answer after you return from your vacation.

I am trying my best to find investors for my invention.

However, according to the PCT timeline, Article 19 is due by mid July. Target publication date sometime mid-September. SIS due sometime early October.

In order to stretch the time during which I can hunt for investors and keep the application alive, what dates should be relevant to me?

FYI, I am based in Singapore. I could perhaps file a patent here first at relatively low cost to get started.

Thanks in advance for all your help.

[Brad]

Most people do not respond to the search report or file any amendments for the PCT.   So the key deadline would then be the expiration of your PCT (usually around 30 months from the earliest priority date) at which point you would have to file in the countries where you want protection. 

[Shahmatt]

Hi Brad,

Thanks again for your reply.

Would there be any situation where not filing Article 19 could lead to an invalid application?

In my case, the Written Opinion cites a defect in my application whereby the claims do not have figure reference signs.

This is a formatting issue, but it affects all my claims. Would non-compliance with this requirement render all my claims invalid, and would this affect the application?

----

Another question: At this stage I suppose the Specifications (Descriptions) are set in stone as this is what defines the application and filing date. Would a minor edit to the Specifications, not for the purposes of adding new material but rather only for further clarification, be possible?

[Brad]

Hi,

I am not an expert on all of the PCT rules so I am afraid I cannot help you with Article 19 questions.  I could try to research the issue for you but we would have to charge for our time to do that as its not easy work and not something we can do for free.

Regarding your other question, if you did a straigt PCT to US filing (called a 371 filing) you cannot really change the application or add anything new.  Labeling the figures may be considered new to some people so I would be a bit careful here.

One trick you can do is instead file what is called  "by pass continuation" where you can file a new application in the USPTO that is basically the same as your old one but has all the changes and corrections.  You then claim priority back to your PCT application so that you can get proper credit for any part of your invention was the properly disclosed in the PCT.   

This is getting into pretty advanced patent strategy so hopefully that makes sense.   (THIS IS NOT LEGAL ADVICE since i have no idea what your specific case or situation is)