PCT International Search and Preliminary Examination Guidelines


Chapter 10  Unity of Invention

Process at the Supplementary International Search Stage

Rule 45bis.6

10.83  Contrary to the case for the main international search, there is no opportunity to pay additional fees for search of further inventions at the supplementary international search stage. Consequently, subject to the possibility of search of additional inventions without payment of fees where little additional search effort is required (as indicated in paragraphs 10.64 and 10.65 with respect to the main international search), the supplementary international search report should be established immediately on the main invention only (see paragraph 10.86 for consideration of what is the main invention).

Rule 45bis.6(a), (b)

10.84  The Authority specified for supplementary search may make its own assessment as to unity of invention, but it should take into account the opinion of the main International Searching Authority included in the international search report as well as any protest by the applicant or decision by the International Searching Authority in relation to such a protest which is received prior to the start of the supplementary international search.

10.85  If the examiner considers that there is a lack of unity of invention, this should be explained in Box No. III of the supplementary international search report.  If the examiner agrees with the assessment in the main international search report, this can be reported by simply referring to the international search report.  On the other hand, if the examiner forms a different point of view, or agrees with a revised view on unity of invention in a decision relating to a protest (which will usually not appear in the original international search report, but will only be available later as a separate document), the reasoning should be set out in full so that it is easily understood by both the applicant and third parties.

Rules 45bis.1(d), 45bis.6(a), (f)

10.86  The main invention will normally be the invention first mentioned in the claims, but the examiner should use appropriate discretion in selecting the invention to be searched where the first mentioned invention is one for which no search report would be established (due to lack of clarity, subject matter excluded from the search  or for any other reason), or else where the applicant has requested that the supplementary search should be limited to one of the inventions other than the first identified by the International Searching Authority responsible for the main international search (for example, because the first invention has been shown by the main international search to be so completely anticipated that it is clear that no patent could be granted for that invention).

Review of Opinion

10.87  The normal protest procedure (see paragraphs 10.66 to 10.70) does not apply to requests for supplementary international search.  However, the applicant may, within one month of the date of notification of the supplementary international search report, request the Authority to review the examiner’s opinion on unity of invention. This request may be subject to a review fee.  The results of the review are promptly notified to the applicant using Form PCT/SISA/503. The same form can be used to indicate that the request for review is considered not to have been made because the review fee has not been paid within 1 month from the date on which the examiner’s opinion was notified to the applicant.

10.88  If the examiner’s opinion is found to be at least partly unjustified, the Authority should issue a revised supplementary international search report, stating the revised view on unity of invention and, where appropriate, including the search results for all claims which should have been included. If the opinion was entirely unjustified, the applicant should also have any review fee refunded.