WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.
Addressing a finding of lack of unity of invention by the ISA
Q: I have received from the International Searching Authority (ISA) an invitation to pay additional search fees due to the finding by the ISA that the international application does not comply with the requirement of unity of invention (Form PCT/ISA/206). The ISA has notified me that, unless the additional fees are paid, the ISA will establish the International Search Report (ISR) only on those parts of the international application that relate to the invention first mentioned in the claims. I disagree with the ISA’s finding of lack of unity and would still like to have all the claims searched. Is there a way to respond to the lack of unity finding without having to pay the additional fees?
A: The search fee is intended to cover the cost to the ISA of carrying out an international search on the international application (as well as for performing all other tasks relating to the search), but only to the extent that the application meets the requirement of unity of invention.1 If the ISA finds that there is a lack of unity of invention, it is entitled to request the applicant to pay an additional search fee for each additional invention (PCT Rule 40.1).
If you fail to pay the additional search fees as invited within one month from the date of mailing of the invitation, the ISA will not search the inventions for which the additional fees are required. You will receive an ISR and a written opinion of the ISA (WO-ISA) based only on those parts of the international application which relate to the invention first mentioned in the claims (“the main invention”), that is, it will cover only certain claims as indicated in Form PCT/ISA/206. If you pay all the additional search fees requested within the above‑mentioned time limit, the ISR will include the results of the search of all inventions in the application. Accordingly, to have all claims searched, you must pay the additional fees determined by the ISA.
If you disagree with the finding of lack of unity of invention by the ISA, you have the option of paying the additional fees under protest (PCT Rule 40.2(c)). To use the protest procedure, you would need to:
– pay the additional search fees (within the applicable time limit), and a protest fee, if the ISA charges such a fee - please refer to the information on your ISA in Annex D of the PCT Applicant’s Guide)2; and
– file a reasoned statement explaining why you consider that unity of invention has been complied with, or that the number of additional fees required is excessive.
Once the fees have been paid, your protest would then be examined by a review body constituted within the ISA, which, if it finds your protest justified, would order the reimbursement to you of the additional fees, either totally or partially, depending on its conclusions. Any protest fee that has been paid would also be refunded if the review body finds that the protest was fully justified. On the request of the applicant, the text of both the protest statement and decision thereon would be notified to the designated (or elected) Offices together with the ISR (PCT Rule 40.2(c)).
Please be aware that if you do not pay the additional fees to the ISA, and you subsequently file a demand for international preliminary examination, the International Preliminary Examining Authority (IPEA) is not obliged to examine any claims relating to an invention in respect of which no ISR has been established (PCT Rule 66.1(e)), and, in practice, it would not do so. Note also that the IPEA may reach a different conclusion from the ISA on the question of lack of unity of invention and if the IPEA finds that the requirement of unity of invention is not complied with, it may choose to invite the applicant, at his/her option to restrict the claims or to pay additional fees (PCT Rule 68.2).
You also have the possibility to file informal comments on the WO‑ISA, arguing against the findings of the ISA that the application lacks unity of invention (provided that you do not file a demand for international preliminary examination). Informal comments are not examined but are made publicly available on PATENTSCOPE as from the date of publication, and forwarded to the designated/elected Offices for consideration in the national phase. For further information on informal comments please refer to the “Practical Advice” published in PCT Newsletter Nos. 01/2015 and 04/2015 at:
https://www.wipo.int/edocs/pctndocs/en/2015/pct_news_2015_13.pdf
Note that if you request supplementary international search, while you may indicate that the supplementary international search should be restricted to one of the inventions as identified by the ISA (PCT Rule 45bis.1(d)), the SISA may, similarly to the IPEA, exclude from the search any claims that were not the subject of the international search (PCT Rule 45bis.5(d)). For further information on the supplementary international searches offered by certain Authorities, see the SISA Annex of the PCT Applicant’s Guide.
Although you do have the opportunity to amend the claims before each designated Office under PCT Article 28 (or each elected Office under PCT Article 41, as the case may be) upon entry into the national phase to satisfy any national requirements on unity of invention, you should be aware that such amendments must not go beyond the disclosure in the international application as filed unless the national law of the designated (or elected) State permits this (PCT Articles 28(2) and 41(2)). Furthermore, in accordance with PCT Articles 17(3)(b) and 34(3)(c), the national law of any designated (or elected) State may provide that, if its national Office is of the opinion that the finding of lack of unity of invention by the ISA is justified, any unsearched parts of the international application are considered withdrawn as far as that State is concerned unless a fee is paid by the applicant. In practice, some Offices require the payment of an additional fee for the national search of the unsearched parts, while other Offices require the filing of divisional applications and the payment of related filing fees concerned (details are given in the respective National Chapters of the PCT Applicant’s Guide). However, in some cases, if a designated (or elected) Office does not agree with a decision made by the ISA, for example, because the applicant has convincingly argued through the informal comments on the WO‑ISA or in response to the written opinion of the IPEA that the requirement of unity of invention is satisfied, the Office concerned may carry out an additional search and examination without requesting additional fees or the filing of divisional applications.
In conclusion, it is not possible to respond to the lack of unity of invention finding and have all claims searched without paying the additional fees. If, however, you decide not to pay the additional fees in the international phase, you may still have the possibility of addressing the issue in the national phase, as indicated above, but you may need to pay a special fee for the unsearched parts or to file divisional applications at each designated Office.
Further information on the requirement of unity of invention can be found in the Administrative Instructions under the PCT, Annex B, at:
https://www.wipo.int/pct/en/texts/ai/annex_b.html
as well as in the PCT Applicant’s Guide, International Phase, paragraphs 5.114 to 5.123 and 7.015 to 7.021 at:
https://www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf
- According to PCT Rule 13.1, the international application must relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.
- Note that, although an additional fee is required for each separate invention, only one protest fee is payable (where applicable), regardless of the number of additional search fees that you have been invited to pay.