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 PCT: after the Int. search report and written opinion 
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Joined: 2016-04-22 03:27:28
Posts: 1

I filed my application with PCT last year March and received the international search report and written opinion in December. I would greatly appreciate any advice on how to proceed from here. My problem is as follows:

First question: Is the 'written opinion of the international searching authority' considered the same as 'international preliminary examination'?

The written opinion cites the following:

1. Yes to Industrial applicability and Novelty, but No to inventive step citing references which show that the invention can be formed by combining two existing inventions.
2. Defect in my application, wherein the references found in the international search report are not cited in the Descriptions section in my application.

With regards to point 1: In my opinion the references cited are not relevant as a valid comparison as these reference show inventions that serve a different function. There is similarity in shape, but that is as far as it goes.

I want to address this by amending my Claims, by putting in a 'whereby' my invention functions in 'such and such' manner. In order to make distinct the manner in which my invention functions thereby differentiating with what has been referenced.

With regards to point 2:
I would like to amend my Descriptions section to include these references. I would preferably also like to discuss the references. This would not, in my opinion, be adding material with regards to the invention.

However in order to do this it seems that, at this stage, I am only allowed to modify the Claims (under Article 19), and not the Description.

Second question: I have been assuming that the International Search Report and Written Opinion is what forms the International Preliminary Examination. On this basis I presume that I am only allowed to modify my Claims and not Description. Is this correct, or have I got the entire thing in a muddle?

2016-04-22 04:03:51

Joined: 2012-01-03 23:03:44
Posts: 85
I do believe the written opinion is part of the prelim exam.

And concerns about inventive step ("obviousness") are where you will spend a lot of time. Not sure about your defect question, maybe you can ask it differently.

There are at least 2 opportunities to amend claims in a PCT, but you might just want to do it before National. I don't think you can modify the description at all, ever.

2016-07-18 14:19:57
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