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Working Group on Multiple Invention Disclosures and Complex Applications

First session:  Geneva, May 7 and 8, 2002



Suggested Structure for Comments

 1. At its sixth session in November 2001, the Standing Committee on the Law of Patents (SCP) discussed the establishment of a Working Group on Multiple Invention Disclosures and Complex Applications, based on a proposal by the Delegation of the United States of America (document SCP/6/6). The SCP agreed that the first session of the Working Group would be held in conjunction with, and during the same week as, the seventh session of the SCP. The SCP also decided that the International Bureau would collect input from the members and observers of the SCP for the first session of the Working Group and publish the contributions received on the SCP electronic forum: https://www.wipo.int/scp (see document SCP/6/9, paragraph 212).

2. Consequently, members and observers of the SCP are invited to submit comments and contributions concerning the activities of the Working Group by one of the following means:

  • by e-mail to scp.forum@wipo.int;
  • by facsimile to +41-22-338-8830 (Attention: Mr. Philippe Baechtold);
  • by regular mail to the following address: World Intellectual Property Organization, 34, chemin des Colombettes, 1211 Geneva, Switzerland (Attention: Mr. Philippe Baechtold).

3. Members and observers of the SCP wishing to submit comments are requested to do so by March 5, 2002.

4. In order to facilitate the preparation of the discussion paper for the first session of the Working Group, it is suggested that comments and contributions on any of the issues identified at the sixth session of the SCP as well as any other issues be organized in accordance with the structure set out below.

I. PROCEDURAL MATTERS

5. The Working Group will meet on Tuesday, May 7, and on Wednesday, May 8, 2002, from 8 a.m. to 9.45 a.m., before the usual working hours of the seventh session of the SCP (10 a.m. to 1 p.m. and 3 p.m. to 6 p.m.). In view of the limited working hours available for the Working Group, it will be necessary to adopt a working procedure that will ensure timely reporting of the Working Group to the SCP so as to facilitate discussion of the draft Substantive Patent Law Treaty (SPLT). For example, maximizing the use of the SCP electronic forum may contribute to an efficient sharing of information and an open exchange of views by the members of the Working Group.

II. ISSUES

6. The SCP identified the following five issues to be examined by the Working Group, although the mandate of the Working Group is not limited to these issues: (i) unity of invention, (ii) the linking of claims, (iii) the number of claims, (iv) the requirement of “clear and concise” claims, (v) special procedures to treat complex applications, such as mega-applications, or large sequence listings.

7. Comments and contributions from the members and observers of the SCP are requested in order to facilitate the discussion on the above issues at the first session of the Working Group. In particular, patent Offices are invited to share their experiences and practices in order to cope with the workloads relating to multiple invention disclosures and complex applications. Comments might address, but need not be limited to, the following issues:

(1) Unity of invention

8. Consideration might be given to the question of whether the unity of invention standard set out in Article 6 of the draft SPLT (see document SCP/6/2) and PCT Rule 13.1 to 13.3 is sufficient, and if not, what could constitute alternatives. In document SCP/6/6, the Delegation of the United States of America pointed out that significant search requirements were imposed on the examiner before the applicant responded to a restriction or unity of invention requirement.

(2) Linking of claims

9. Rule 6(5) of the draft SPLT (see document SCP/6/3) and PCT Rule 6.4 provide the rules concerning dependent claims and multiple dependent claims. The applicability of these rules might be explored in view of increasing the efficiency in the examination process. In document SCP/6/6, the Delegation of the United States of America stated that new practices, such as fully searching any linking claims before committing to the search of linked inventions, might be worth considering to reduce overall costs.

(3) Number of claims

10. The Working Group may consider the possibility of a reasonable limitation on the number of claims, such as the total number of claims or the number of independent claims.

(4) Requirement of “clear and concise” claims

11. Article 11(2) of the draft SPLT provides that the claims, both individually and in their totality, shall be clear and concise. The Working Group may consider the interpretation of those terms in relation to the complexity of applications, in particular in the field of new technologies.

(5) Special procedures to treat complex applications, such as mega-applications, or large sequence listings

12. The Working Group may explore best practices for processing complex applications, such as mega-applications and applications containing large sequence listings, during the search and examination procedure. In document SCP/6/6, the Delegation of the United States of America expressed an interest, for example, in discussing a reduction of re-searching the prior art in relation to a particular application, where the claimed concept has diverted from the subject matter of the initial search.

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