In the second part we will see three more cases and we will briefly conclude on what are the appropriate steps for each case.

The applicant receives the Written Opinion of the International Examining Authority and finds that the examiner has concluded that one or more of the Claims appear to lack novelty, inventive step or industrial applicability. In this case the applicant essentially faces the problem that one or more claims of his invention do not meet the criteria for the grant of a patent. If the applicant, after careful study, concludes that the negative results of the examiner's Written Opinion can be overcome by amending the claims he has filed so that they again exhibit features of novelty and inventiveness, the PCT procedure provides two options: a ) Following Article 19 of the PCT Convention the applicant may amend the claims of his description, so that they meet the requirements of the International Examining Authority. Any amendments made under Article 19, together with the accompanying declaration, shall be published with the international application. It must be emphasized at this point that any modifications according to Article 19 will not affect the contents of the subsequent Report of the International Preliminary Search, regarding the patentability of the invention. b) Following Article 34 of the PCT Convention the applicant may amend the claims, the technical description and/or the drawings of his invention, submitting at the same time an analytical argumentation regarding the novelty, the inventive step and/or the industrial application presented by the invention. This process requires the timely filing of a request for an International Preliminary Examination and payment of the corresponding fees. The advantages of a favorable International Preliminary Exam are many. Experience has shown that many National Offices give considerable weight (to the point of absolute acceptance) to a positive International Preliminary Examination. All Regional and National Offices will use the results of the International Preliminary Examination to assist them in conducting the respective regional or national examination of an application. On the other hand, offices that have large staff or have different national laws in relation to the standards of the PCT Convention, will take into account the results of the International Preliminary Examination, but will continue to conduct the corresponding examination normally. Corresponding offices with less staff and those with no examiners at all tend to rely almost entirely on the results of the International Preliminary Examination. Therefore, one must take into account the usefulness of the specific procedure, the financial and time benefit, weighing it with the corresponding costs involved in the procedure itself. It should also be taken into account that the International Preliminary Examination allows the applicant to assess the chances of substantial protection through the patent in the various countries of the world. This information may prove to be particularly useful in making decisions regarding entry into the national phases. When receiving a written opinion from the CPA indicating that some or all of the claims lack novelty and/or inventive step, the applicant must estimate the cost and effort required to rebut these objections and accordingly compare the costs which will be required to counter the same (or possibly more) objections before the national offices during each national phase. In general, for applications that are expected to enter the national phase of a large number of countries, the preliminary examination of the application is a rather advantageous option. But as the number of countries decreases, so does the value of such a process. So one has to consider many parameters before arriving at the optimal choice. the applicant must calculate the cost and effort required to rebut these objections and accordingly compare with the costs that would be required to rebut the same (or possibly more) objections before the national offices during each national phase . In general, for applications that are expected to enter the national phase of a large number of countries, the preliminary examination of the application is a rather advantageous option. But as the number of countries decreases, so does the value of such a process. So one has to consider many parameters before arriving at the optimal choice. the applicant must calculate the cost and effort required to rebut these objections and accordingly compare with the costs that would be required to rebut the same (or possibly more) objections before the national offices during each national phase . In general, for applications that are expected to enter the national phase of a large number of countries, the preliminary examination of the application is a rather advantageous option. But as the number of countries decreases, so does the value of such a process. So one has to consider many parameters before arriving at the optimal choice. In general, for applications that are expected to enter the national phase of a large number of countries, the preliminary examination of the application is a rather advantageous option. But as the number of countries decreases, so does the value of such a process. So one has to consider many parameters before arriving at the optimal choice. In general, for applications that are expected to enter the national phase of a large number of countries, the preliminary examination of the application is a rather advantageous option. But as the number of countries decreases, so does the value of such a process. So one has to consider many parameters before arriving at the optimal choice.

The applicant belatedly receives the International Search Report and the Written Opinion of the International Examining Authority where the examiner concludes that one or more claims lack novelty, inventive step or industrial applicability. According to the PCT, the Search Report together with the CPA's Written Opinion must be sent to the applicant either 3 months from the receipt of the international application by the CPA or 9 months from the priority date, whichever is later. However, it is not uncommon for these time limits to be violated. If an applicant receives these documents late, it is always possible to request an International Preliminary Examination within 3 months from the date of dispatch of the International Search Report (or within 22 months from the priority date, if this expires later). But here the question arises whether, at this stage, such a process is worth it. So the answer is based on how late the documents of the International Investigative Authority were received. If the International Preliminary Examination has not been issued by the time decisions about entry into the national phases have to be made, the applicant will not have the benefit of the EIA when making those decisions. And if the International Preliminary Examination is issued after the national offices have started the procedures and examination of the application, the value of the IEA is reduced even more. In general, if the written opinion of the International Examining Authority is not sent in time to allow the International Preliminary Examining to be issued before the proceedings before the national offices begin, it may be best to work directly with the national offices; instead of bearing the costs of the specific procedure as well. If this path is chosen, it is recommended to send some comments and amendments to the Office, immediately after entering the national phase and receiving the written opinion of the IEA. In this way, the national examiner will have the applicant's comments on the matters that have arisen from the written opinion of the IEA as soon as he starts the national examination.

The applicant does not receive the International Search Report and the Written Opinion of the International Examining Authority, but is informed that according to Article 17 of the PCT, no International Search Report will even be drawn up. If the applicant receives a "Declaration of Non-Issuance of an International Search Report" from the EIA, it means that either the application relates to subject matter for which the EIA is not required to conduct an investigation, or the description, claims or drawings do not meet the requirements of the EIA PCT to such an extent that no meaningful investigation could be conducted. In any case the DEA will not issue its written opinion and will not include its judgments regarding the innovation, the inventive step and the industrial application of the invention. In this case, filing a request for an International Preliminary Examination and paying the corresponding fees has very little value, since the International Preliminary Examining Authority is not obliged to examine claims relating to inventions for which no International Investigation has been conducted. If an applicant wishes to make amendments under PCT Article 34, he may file the corresponding request within 22 months of the priority date or within 3 months of the issuance of the Declaration of Non-Filing of an International Search Report, whichever is earlier limit expires later. Any amendments submitted will be sent to the selected national or regional offices, but of course no opinion will be expressed as to novelty or inventive step. Of course the depositor must always remember that any amendments must not exceed the purposes of the original deposit. may file the corresponding request within 22 months from the priority date or within 3 months from the issuance of the Declaration of Non-Filing of an International Search Report, whichever is later. Any amendments submitted will be sent to the selected national or regional offices, but of course no opinion will be expressed as to novelty or inventive step. Of course the depositor must always remember that any amendments must not exceed the purposes of the original deposit. may file the corresponding request within 22 months from the priority date or within 3 months from the issuance of the Declaration of Non-Filing of an International Search Report, whichever is later. Any amendments submitted will be sent to the selected national or regional offices, but of course no opinion will be expressed as to novelty or inventive step. Of course the depositor must always remember that any amendments must not exceed the purposes of the original deposit. but no opinion will reasonably be expressed as to novelty or inventive step. Of course the depositor must always remember that any amendments must not exceed the purposes of the original deposit. but no opinion will reasonably be expressed as to novelty or inventive step. Of course the depositor must always remember that any amendments must not exceed the purposes of the original deposit.

In summary, choosing the International Preliminary Exam is a wise choice when one wants to advance to the national phase of several countries, avoiding the process of answering to each office separately. So the key point is to analyze the costs required at the national level and whether they are less than filing a request for an International Preliminary Examination. In addition, please note that regardless of the opinion of the International Examining Authority and whether it is positive or negative, some applicants wish to file a request for an International Preliminary Examination, as they can in this way get a "second opinion", regarding the whole prior art but also to assist the procedures during the national/regional examination stage.