4 TIPS – What to do with a Written Opinion (WO/ISA)?
4 TIPS – What to do with a Written Opinion (WO/ISA)?
1. Do nothing. Wait until National or Regional Stage to address the WO/ISA.
Arguments can be filed for the first time at the national and/or regional stage. This strategy is generally recommended when the WO/ISA is favorable, or when it is simply desired to delay costs associated with prosecution.
2. File informal comments on the WO/ISA.
The Applicant can file his/her comments regarding the WO/ISA opinion on the record, but there will be no comment or rebuttal from any office of the PCT. This strategy is generally recommended when the WO/ISA merely requires some simple clarification.
3. File Article 19 Amendments.
If this path is followed, the claims are adapted in response to the WO/ISA, and the claims as amended are published. The amendments will be published in the PCT, and the Applicant’s Comments will be passed on to the national stage and regional stage patent offices, without comment from the Examiner that issued the WO/ISA.
4. File a Demand and carry out full prosecution under Chapter II.
A full discussion of the issues can be had with the Examiner. This can be very influential in the subsequent prosecution of any national stage applications of this patent family. This strategy is recommended when a negative WO/ISA has been received and it is believed that the Examiner can be persuaded to issue a favorable IPER.
