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I receive a positive ISR (i.e., novel and inventive) for what I thought was rather broad claims. What is the best approach to prosecute broader claims in view of the positive ISR (assuming no added matter and that the broader claims are supported)?

I appreciate that this answer will depend on various strategy parameters (finances, number of NPs, competition, potential licensing, urgency of grant, etc.), but there are a few fundamental issues that it touches upon in any case. Questions:

  1. Can one file a demand after the ISR to broaden the claims, keeping in mind that an Examiner may find more prior art that could potentially affect your originally-accepted narrower PCT claims? The idea being to streamline prosecution for the broader claims when descending to National Phase (NP) and getting the Examiner's written opinion on the broader claims. There is risk involved here. Is it ever possible to revert back to the original PCT claims at the NP?

  2. Use the ISR-accepted narrower claims at the NP and prosecute to allowance in various jurisdictions. The idea being that you want to exploit the favourable PCT to the fullest, at least in the short term. Can you then file a divisional application on the broader claims? Is there an issue of double-patenting?

  3. Which jurisdictions would claim-broadening at NP (or divisional) be problematic, if any?

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  • Who did you use for ISA?
    – George White
    Aug 3, 2023 at 15:21

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Think of the report of the ISA as advisory. Actual rules and judgements vary from jurisdiction to jurisdiction and each National Stage examination is subject to its rules and the point of view of the examiner you get.

An exception is when the ISA and the national stage are both the European Patent Office. Then the ISR will be given full weight and a second search will not be done, assuming you do not change the claims.

Most jurisdictions allow wide ability to change the claims when entering the national stage and during the national prosecution.

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