PCT International Search and Preliminary Examination Guidelines

PART III EXAMINER CONSIDERATIONS COMMON TO BOTH THE INTERNATIONAL SEARCHING AUTHORITY AND THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY

Chapter 10  Unity of Invention

Process at the International Preliminary Examination Stage

Article 34(3)(a) to (c); Rule 68

10.71  The procedure before the International Preliminary Examining Authority regarding lack of unity of invention is governed by Article 34(3)(a) to (c) and Rule 68 (see also Rule 70.13). This procedure is more fully explained in paragraphs 10.74 to 10.82. It should be noted that in most instances lack of unity of invention will have been noted and reported upon by the International Searching Authority, which will have drawn up an international search report and written opinion based on those parts of the international application relating to the invention, or unified linked group of inventions, first mentioned in the claims (“main invention”), unless the applicant has paid additional fees.

10.72  If the applicant has not availed himself of the opportunity to have the international search report issued on at least some of the other inventions, this must be taken as an indication that the applicant is prepared for the international application to proceed on the basis that it relates to the invention first mentioned in the claims as originally contained in the international application as filed.

10.73  However, whether or not the question of unity of invention has been raised by the International Searching Authority, it may be considered by the examiner during international preliminary examination. In his consideration, he should take into account all the documents cited in the international search report and any additional documents considered to be relevant.

Rule 68.2, 68.3

10.74  Where the examiner finds a lack of unity of invention, a communication may, at the option of the examiner (see paragraph 10.76), be sent to the applicant, using Form PCT/IPEA/405, informing him why there is a lack of unity of invention and inviting him within one month from the date of the invitation, either to restrict the claims or to pay an additional fee for each additional invention claimed. Where such a communication is sent, at least one possible restriction, which would avoid the objection of lack of unity of invention, is indicated by the examiner. In the invitation to pay additional fees, the examiner sets out a logically presented, technical reasoning containing the basic considerations behind the finding of lack of unity in accordance with these Guidelines. Where a protest fee is payable if the applicant wishes to pay the additional fees under protest (see paragraphs 10.78 to 10.82), the International Preliminary Examining Authority also invites the applicant to pay any such fee within one month from the date of the invitation.

Article 34(3)(c); Rules 68.4, 68.5

10.75  If the applicant does not comply with the invitation (by not paying the additional fees or by not restricting the claims either sufficiently or at all), the international preliminary examination report is established on those parts of the international application which relate to what appears to be the “main invention” and the examiner indicates the relevant facts in such report. In cases of doubt as to which is the main invention, the invention first mentioned in the claims is considered the main invention.

Rule 68.1

10.76  However, there are cases of lack of unity of invention where, compared with the procedure of inviting the applicant to restrict the claims or to pay additional fees (Rule 68.2), no or little additional effort is involved in establishing the international preliminary examination report for the entire international application. Then, reasons of economy may make it advisable for the examiner to avail himself of the option referred to in Rule 68.1 by choosing not to invite the applicant to restrict the claims or to pay additional fees. In this situation, he carries out his preliminary examination and establishes the international preliminary examination report on the entire international application, but indicates, when establishing the report, his opinion that the requirement of unity of invention is not fulfilled and the reasons therefore.

Article 34(3)(c)

10.77  If the applicant timely complies with the invitation to pay additional fees even under protest, or to restrict the claims, the examiner carries out international preliminary examination on those claimed inventions for which additional fees have been paid or to which the claims have been restricted. It should be noted that “the national law of any elected State may provide that, where its national Office finds the invitation of the IPEA justified, those parts of the international application which do not relate to the main invention shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to that Office” (Article 34(3)(c)).

Protest Procedure

Rule 68.3(c)

10.78 The applicant may protest the allegation of lack of unity of invention or that the number of required additional fees is excessive and request a refund of the additional fees paid. If, and to the extent that, the International Preliminary Examining Authority finds the protest justified, the fees are refunded. (The additional examination fees must be paid for any protest to be considered.) The International Preliminary Examining Authority may require a protest fee to be paid in order for the protest to be considered (see paragraph 10.81).

Rule 68.3(c)

10.79  The protest is in the form of a reasoned statement accompanying payment of the additional fee, explaining why the applicant believes that the requirements of unity of invention are fulfilled and fully taking into account the reasons indicated in the invitation to pay additional fees issued by the International Preliminary Examining Authority.

Rule 68.3(c), (d); Section 403

10.80  The protest is examined by a review body constituted in the framework of the International Preliminary Examining Authority, and a decision taken on it. The procedure is determined by each International Preliminary Examining Authority, although the review body must not be limited to the person who made the decision which is the subject of the protest. Some Authorities may review the protest in two stages, with a review body being convened only if a preliminary review of the protest reveals that the protest is not entirely justified. To the extent that the applicant’s protest is found to be justified, the additional fees are totally or partly reimbursed. At the request of the applicant, the texts of both the protest and the decision on it are notified to the elected Offices by the International Bureau as an item accompanying the international preliminary examination report (see paragraph 10.82).

Rule 68.3(e)

10.81 Details of the protest fee, if any, charged by the International Preliminary Examining Authorities appear in the PCT Applicant’s Guide, Annex E. If, where it is due, the protest fee is not paid within one month from the date of the invitation to pay, the protest is considered not to have been made. The protest fee is only refunded to the applicant under Rule 68.3(e) where the review body finds that the protest was entirely justified (the same principles are applied in the assessment as to whether the refund is due as are applied at the stage of international search under Rule 40, see paragraph 10.69).

Rule 68.3(c); Section 603

10.82 Where the applicant paid additional examination fees under protest, he is informed promptly (using Form PCT/IPEA/420) of any decision about compliance with the requirement of unity of invention. At the same time the International Preliminary Examining Authority transmits to the International Bureau a copy of the protest and of the decision thereon as well as any request by the applicant to forward the texts of the protest and the decision to elected Offices.