Working Group on Multiple Invention Disclosures and Complex Applications

Second session: Geneva, November 26, 2002

Suggested Structure for Comments

Comments and proposals from the members and observers of the SCP might address, but need not be limited to, the following issues:

(1) Unity of invention

Q1. What is the standard applied under the applicable law of your country/region that allows a group of inventions being claimed in a single patent application? Please specify relevant provisions under the law and/or regulations as well as any Guidelines. Please also specify the methodology applied in your Office in order to determine compliance with the applicable standard.

Q2. Does your Office encounter any difficulties in applying the current standard in practice, and if so, what are these difficulties?

Q3. What should be reviewed and how could the current standard be improved?

Q4. Do you have any proposals on whether and how a harmonized standard on unity of invention, which could be acceptable to both examining and non-examining Offices, should be addressed in the draft Substantive Patent Law Treaty (SPLT)?

(2) Linking of claims

Q5. Does the applicable law of your country/region allow independent as well as dependent claims? What are the definitions of "independent claim" and "dependent claim" under your national/regional law?

Q6. Provided the requirement concerning unity of invention is met, does your national/regional law provide any restrictions on how to link independent claims and/or dependent claims (for example, restrictions on independent claims, dependency of multiple dependent claims on other multiple dependent claims and multiple dependent claims referring in the cumulative to the claims on which they depend)?

Q7. Does your Office encounter any difficulties in applying the current restrictions described under Q6? Or, if your Office does not provide such restrictions, does it encounter any difficulties in practice because of lack of such restrictions?

Q8. Do you have any proposals on whether and how the issue of independent/dependent/multiple dependent claims should be addressed in the draft SPLT?

(3) Number of claims/clear and concise claims

Q9. Provided the requirement concerning unity of invention is met and the independent and dependent claims are linked in accordance with the requirements under the applicable law of your country/region, may a large number of claims be limited on the basis of the requirement regarding "clear and concise" claims? If yes, under what circumstances could the requirement of clear and concise claims be invoked?

Q10. Does your Office encounter any difficulties in applying the requirement described under Q9, and if so, what are these difficulties?

Q11. Provided the requirements concerning unity of invention and clarity and conciseness of claims are met and the independent and dependent claims are linked in accordance with the requirements under the national/regional law, can the Office of your country limit the number of independent claims, dependent claims or distinct embodiments (such as large "Markush" groupings or other large grouping of independent species inventions)? If yes, under what circumstances could the limitation be required?

Q12. Does your Office encounter any difficulties in applying the limitation described under Q11? Or, if your Office does not provide such limitation, does it encounter any difficulties in practice because of lack of such limitation?

Q13. Do you have any proposals on whether and how the issue of clarity and conciseness of claims, or any other requirements which may limit an unreasonable number of claims, should be addressed in the draft SPLT?

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

Q14. Does your Office encounter any difficulties in processing complex applications, such as mega-applications or applications containing large sequence listings, large number of claims or claims defining the invention by statements of desiderata?

Q15. Does your Office take any special measures applicable to search and/or examination of such complex applications?

Q16. Do you have any proposals on whether and how special procedures to treat complex applications should be addressed by the SCP? Are there any aspects that should be included in the draft SPLT, or that should be discussed separately?