What if negative opinion in the PCT Search Report cannot be overcome by amending the existing Claims?

In most cases, our patent attorneys can adjust the Claims to overcome the negative opinion in the initial PCT Search Report by requesting International Preliminary Examination, which is optional and additional fee will occur. However, what if the objections cannot be overcome by amending the existing claims?

Rest assure, as a veteran patent attorney who is familiar with the characteristics and nuances of patent systems across different jurisdictions, here are 3 ways to get your patent granted.

1. The U.S. Patent Exceptionalism

In almost all jurisdictions, Patent Offices does not allow substantial adjustments to the specifications. During the prosecution, patent attorneys can help the applicants adjust the Claims to overcome the patentability deficit, but no amendment shall introduce “new matter” into the disclosure in the original specification.

There is one exception if you intend to file a PCT national phase enter into the U.S., file a new U.S. application under 35 U.S.C. 111(a) claiming priority to the PCT application and introduce “New Matter” into the specification. This is known as a Bypass CIP (Continuation-in-Part). This allows inventors to include “enhancements” to the original design that were developed after the parent application was filed. The majority of the specifications will repeat the description provided by the parent application, as the invention in the CIP is mostly the same as the invention in the parent, but new material may also be added to describe the improvements.

It is important to note that claims in the CIP that concern subject matter disclosed in the parent application are entitled to the filing date of the parent application. However, claims that are related to subject matter that is introduced in the CIP are only entitled to the filing date of the CIP. While this may appear to make CIPs ineffective, it’s important to remember that the new subject matter is usually closely related to the material from the parent application. The ability to protect the contents of the parent application in the CIP may be very important if, for example, the new matter absolutely cannot work without them. This situation may not be uncommon, as the intended purpose is to allow inventors to submit enhancements/improvements that are built upon the original invention.

If the PCT Search Report is highly negative and the objections cannot be overcome by amending the existing claims, filing a Bypass CIP is an effective means to rescue the U.S. patent. However, a patent attorney must evaluate whether the new matter is sufficient to provide an inventive step, and ensure that the filing time is within the 12-month grace period from the publication of the parent application.

2. Countries with Formality-Only Examination (20-year-term Patent)

In these jurisdictions, the patent office only verifies that the patent application meets administrative requirements (correct forms, fees, and documentation).

(1) South Africa: Historically known as the most commercially significant “non-examination” system. While it is moving toward a substantive system, many patents are still granted via registration.

(2) Nigeria: Performs only formal examination automatically; patents are typically granted within 18 months without office actions on novelty.

(3) Luxembourg: Although Luxembourg requires a novelty search report to be drawn up for the patent to be granted, the search result will not affect the final grant, because the patent office will not performs a substantive examination base on the search report. The govt cost from filing to grant consists of €40 Filing fee, €450 Search fee (performed by EPO), and no grant fee. Early publication request is optional, yet it can reduce the time from filing to grant to approximately 6 to 8 months. Without this request, the standard processing time for a Luxembourg patent is typically 18 months, as the patent is normally issued only after the statutory 18-month publication period has elapsed.

Overall, Luxembourg and South Africa 20-year-term patent are the most popular choices in the Countries with Formality-Only Examination.

3. Countries with Utility Models (10-year-term)

Utility models are the primary alternative for inventions that may fail a “novelty” or “inventive step” (obviousness) test. They provide faster, cheaper protection with no substantive examination in many countries.

(1) Ireland: specification shall be in English, it calls short-term patent instead of utility model, only formal examination, can often be granted in under 12 months.

(2) Germany: specification shall be in German, only formal examination, typically takes around 4 months to get registered.

(3) France: specification shall be in French, methods/processes inventions can be included, only formal examination to get registered.

(4) China: specification shall be in Chinese, checks for formal requirements and obvious defects, typically takes around 6-12 months to get registered.

(5) Japan: specification shall be in Japanese, only formal examination, typically takes around 2-4 months to get registered.

Our global patent attorneys network can navigate you through the process of any of above mentioned jurisdictions. If you’re not sure which way fits your patent best, feel free to contact us at info@legalhoop.com. Preliminary consultation is always free.