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WIPO to make written opinions on patentability available for third party inspection during the international phase


10th Jul 2014

With Microsoft and a number of other technology companies in the news recently setting out their opposition to the NSA measures forcing them to release their customer’s private electronic records, it is interesting to see the World Intellectual Property Organization (WIPO) accelerating access to what was previously (albeit only temporarily) confidential data.

For the last 10 years, WIPO has operated an enhanced international search system whereby the International Searching Authority (ISA) establishes a ‘written opinion’ at the same time as establishing the International Search Report (ISR) for a given international application. The written opinion states whether the invention appears to the ISA to meet the requirements of novelty, inventive step and industrial applicability, as well as the other requirements for international applications.

This written opinion is sent to the applicant with the ISR in order to help the applicant put the results of the ISR into context and to make a preliminary evaluation as to the chances of obtaining a patent based on the pending claims. Under current practice (i.e. before July 2014), the ISR is published with the international application at 18 months after the priority date (if it is available in time), and is therefore available to third parties, whilst the written opinion remains confidential and is not made available to the public until the end of the international phase (i.e. 30 months from the priority date).

However, under the law in force for international applications filed after 1 July 2014, the written opinion (in its original language) will also be made available to the public at the time of publication of the international application with the ISR via online inspection of the PATENTSCOPE database. Furthermore, if the applicant decides to submit informal comments in response to the written opinion then these will also be available via the PATENTSCOPE database.

This will mean that third parties will be able to monitor a competitor’s patent applications and make a more accurate evaluation as to the chances of the competitor obtaining a patent based on the initial claims right from the date of publication of the international application with the ISR. Access to the specific objections raised by the Examiner may also help third parties to make the most of the opportunity for filing third party observations during the international phase. These observations are forwarded to the Patent Offices of all designated and elected states and so can be an efficient way of bringing relevant documents to the attention of the various national examiners.

As this law only applies to international applications filed after 1 July 2014, we will not see the effect of these changes until 2016 when those applications begin to publish.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

Author
Jon West
Senior Associate
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