The first step in filing a PCT application for patent protection in one or more foreign countries is to submit your application to one of 15 International Search Authority (ISA) offices. ISAs are essentially divisions of local patent offices which handle the examination of PCT applications.
The first thing that an ISA does is research potential prior art. This research is used to generate an International Search Report and Written Opinion—typically referred to as an ISA or ISA-WO. Included in the report is the ISA’s opinion as to the whether any of the invention’s claims are patentable. You may receive an opinion stating that all, some, or no claims are patentable. The former is the most favorable, but also the most uncommon.
In the likely circumstance that the ISA doesn’t look favorably on some of your claims, but you believe you have a valid counterargument, there are means of appealing the opinion.
The Demand for International Preliminary Examination is a key way of supporting your patent claims, as well as expediting patent prosecution.
Under Chapter II of the PCT, a patent applicant has the right to request that their patent application be reviewed, with a non-binding opinion being provided as to whether the claims in question are novel, non-obvious, and ultimately patentable. This is achieved by filing a Demand for International Preliminary Examination, or DIPE.
A DIPE is a way for you to respond to the ISA and explain as to why the claims in question are novel—that is, how your invention is different. The DIPE essentially gives you the ability to ask for a second, non-binding opinion, based upon your original application, as well as the arguments contained in the DIPE.
However, it is easy to make mistakes in the DIPE, as the requirements for assembling a DIPE are rather narrow and stringent. For instance, you cannot submit a lengthy, passionate argument in favor of the patentability of your claims. You are strictly limited to maximum length of 500 words.
Assuming you haven’t run afoul of any of the requirements for the DIPE, once it is submitted, the ISA will generate an International Preliminary Examination Report (IPER) that indicates whether your argument has tilted them in favor of your claims (which may or may not be amended). If you have managed to gain a favorable opinion, there are jurisdictions which automatically rubber stamp the IPER and issue a patent. Thus, a DIPE isn’t just a means for appealing an unfavorable opinion, but is also an effective means of expediting patent prosecution in other countries.
This is why it’s advisable to have the services of a patent attorney familiar with international patent law—there are ways of turning unfavorable situations to your advantage, if you only know how. If you need assistance with obtaining patent protection in foreign countries, the Law Office of Michael O’Brien can help. To learn more, contact us today by calling (916) 760-8265, or by sending a message using our contact form.