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If I file a patent application and it turns out some of my claims are lacking novelty, or an inventive step, do I need to amend those claims in order to comply with PCT Article 33(2) or PCT Article 33(3)?

Some basis:

  • I am trying to file a patent with about 30 claims.
  • It was found that claims 1 to 8, and 24 to 30 lack novelty due to a prior art.
  • It was found that only claims 17 to 19, and 21 to 23 contain an inventive step. The rest do not.
  • All claims contain industrial applicability.

Now that I know about a prior art which causes a lot of my claims to lack novelty or an inventive step, is there something I need to do in order to amend them? What is the process if you just found out some prior art interferes with some of your claims?

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Since you mention Articles 33(2) and (3) PCT, I assume that you requested International Preliminary Examination, and that the Examiner who drafted the International Preliminary Examination Report (IPRP) found that some of your claims are not novel.

However, the IPRP is just that - preliminary. You may respond to the IPRP to try and overcome the objections it raises (Article 34(2)(d) PCT), but this is not compulsory. In other words, you are not obliged to amend your application during the international (PCT) phase.

When you enter the national/regional phases with your PCT application, you will have at least one opportunity to amend your application (Article 41(1) PCT) within a certain time limit (which depends on the patent office).

Which brings me to my second point. Just because the IPRP says that some claims are unpatentable does not mean:

  • that they really are (the Examiner might have misread one of the pieces of prior art, or he might have interpreted the prior art too broadly), or
  • that they are in all jurisdictions (for example, there are not-insignificant differences in practice between the USPTO and the EPO concerning obviousness or chemical inventions).

Also, there is always the chance that each of the patent offices where you entered the national/regional phase will start examination from scratch, possibly starting from different prior art.

In this context, I usually find amending the PCT application during the international phase to be of marginal interest, at best.

I usually consider making amendments only after the application it has entered the national/regional phases and the national/regional Examiner has rejected some of the claims. (Which I may address by arguing against the rejections, or by amending the claims, depending on the situation.)

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    This is an excellent answer. I really recommend @Alexandru consult with a patent lawyer. Doing this alone may be cheaper, but probably will end up with a weak patent (or none at all). – Eric Shain Feb 5 '17 at 15:41
  • Thanks Alexandre, your response was very informative. I have a question around the patent-ability of claims. Let's say I enter the national phase with one jurisdiction and the patent examiner complains that a claim lacks novelty, or an inventive step, due to prior art. How would you amend it, in that case? I guess I am a bit confused and I am wondering whether or not all claims in a patent have to have novelty, inventive steps, and industrial applicability? If I want to expand on a prior art with novel ideas, what is the best way to do so? – Alexandru Feb 5 '17 at 17:16
  • @Alexandru The problem with your question is that no one can give specific advise without having all the information. This is why you need to consider hiring a patent lawyer. Claims are challenging. Legal precedent matters. I once worked with a law firm on one of my patents that only allowed the partners to write claims whereas associates could do drafting of the specification. – Eric Shain Feb 6 '17 at 15:06
  • I totally agree with @EricShain. All we can say in abstract is that all of the claims have to be novel, inventive, and have industrial applicability, and that (as you probably know) you achieve this by making sure that each independent claim meets these criteria. Anything beyond that is fact- (and often jurisdiction-) specific. A patent attorney is best placed to advise you. – Alexandre Flak Feb 6 '17 at 15:50
  • I must also add that whenever you are amending your application, you must make sure that you are not introducing any new matter. This can be a surprisingly subtle exercise, and some jurisdictions are very unforgiving in this respect (in particular the European Patent Office). – Alexandre Flak Feb 6 '17 at 15:54

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