PCT AG-IP 10.072 What happens where the International Preliminary Examining Authority finds that “unity of invention” is lacking?

Rule 68
70.13

10.072.   What happens where the International Preliminary Examining Authority finds that “unity of invention” is lacking?  If the International Preliminary Examining Authority considers that the international application does not comply with the unity of invention requirement (see paragraphs 5.114 to 5.123 for the notion of “unity of invention”), it may choose between two courses of action:  it may carry out the international preliminary examination on the entire international application and express its views on the lack of unity of invention in the international preliminary report on patentability (Chapter II of the PCT), or it may invite the applicant, at his option, either to restrict the claims so that they meet the requirement (in which case the Authority must specify at least one possibility of restriction) or to pay additional fees (since the preliminary examination fee is calculated to cover cases where unity of invention exists).  If the applicant chooses to restrict the claims as required, the examination is carried out on the claims as restricted.  If the applicant chooses to pay the additional fees, the international preliminary examination is carried out on the claims for the main invention and those claims in respect of which additional fees were paid, and the report will indicate that such additional fees have been paid.  The additional fees may be paid under protest, in which case procedures similar to those explained in relation to the international search apply (see paragraphs 7.019 and 7.020).  If the applicant neither restricts the claims nor pays additional fees, the examination is carried out on the main invention as identified by the International Preliminary Examining Authority or the applicant, or in cases of doubt as defined in Rule 68.5 (namely, the invention first mentioned in the claims is considered to be the main invention).

Article 34(3)

10.073.   A finding of lack of unity of invention may continue to be important during the national phase.  Any elected Office which agrees with the finding of lack of unity may, during the national procedure, require the applicant to restrict the claims or to divide the application into a number of divisional applications, or to pay special fees in order to maintain those parts of the international application which do not relate to the main invention (for further details, see Article 34(3)).

Source: http://www.wipo.int/pct/en/appguide/text.jsp?page=ip10.html

Date retrieved: 02 November 2015

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