PCT opinion

[iassaf]

I have applied for a PCT patent. I did not request PCT prosecution as I saw no real value in that. I recently received the PCT opinion. The opinion was unfavorable but I think the patent officer had missed the points that make the invention novel. My questions are:

1- Can I argue the PCT opinion?

2- How much effect the PCT opinion will have when I file at the National stage?

3- I think I have one chance to amend the claim with the PCT (within two months of their opinion). Should I do this or just do it at the National stage (to avoid the chance of PCT giving another unfavorable opinion)?

4- With the opinion, they state that I can send a letter commenting on the PCT opinion. This letter will be distributed to all National offices. Is this the better way to deal with this situation?

Thank You,
ImadWhat is the name of your state (only U.S. law)?

 

[divgradcurl]

I have applied for a PCT patent. I did not request PCT prosecution as I saw no real value in that. I recently received the PCT opinion. The opinion was unfavorable but I think the patent officer had missed the points that make the invention novel. My questions are:

1- Can I argue the PCT opinion?

To be honest, it's been a while since I have handled one of these, but I don't think you can argue the PCT's opinions in the international preliminary examination report, other than explaining the purpose and scope of any claim amendments you may file. See PCT Article 19.

2- How much effect the PCT opinion will have when I file at the National stage?

Again, it's a bit fuzzy here -- but I don't remember ever arguing anything at this stage. Different national offices handle the international preliminary examination differently, and apply their own laws. I believe that in the U.S., the international opinion can be persuasive, but not determinative.

When I was doing prosecution, we never responded to the preliminary opinions, and chose to argue in the national offices. Probably a bit more expensive to do it that way, and more work, but preserves your rights better.

3- I think I have one chance to amend the claim with the PCT (within two months of their opinion). Should I do this or just do it at the National stage (to avoid the chance of PCT giving another unfavorable opinion)?

Correct. See above.

4- With the opinion, they state that I can send a letter commenting on the PCT opinion. This letter will be distributed to all National offices. Is this the better way to deal with this situation?

The main problem with commenting on the preliminary opinion is that anything you say will be held against you in the national proceedings. Different national offices will apply their own country's laws to the prosecution, so whatever you say may be treated differently depending on which national office you are in. It's better from a rights standpoint to argue in each national office independently -- although it is more work -- because then you have the fallback argument that even if you say something in one country that could potentially hurt you in another, at least you preserve the argument that different countries have different laws (different ways of determining patentability, for example), so you can't necessarily apply the arguments you make in one national office to another national stage application. Make sense?

Bit if you respond to the preliminary opinion, whatever you say there will be used against you, if applicable, in each national stage prosecution.

 

[iassaf]

Thanks divgradcurl,

The conclusion is there is no significant value to purse any thing with the PCT post the issue of the opinion (might even cause harm).

One more issue, I used a patent agent to file the PCT. Things are getting tight. I want to represent myself from this point on.

How can I change my representive with the PCT office?

Thanks again.

 

[divgradcurl]

Thanks divgradcurl,

The conclusion is there is no significant value to purse any thing with the PCT post the issue of the opinion (might even cause harm).

One more issue, I used a patent agent to file the PCT. Things are getting tight. I want to represent myself from this point on.

How can I change my representive with the PCT office?

Thanks again.

§ 90.6 Revocation and Renunciation - Appendix T Patent Cooperation Treaty