PA 07/2013: Amending the international application in order to address a finding of lack of unity of invention

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.

Q: I have filed an international application in respect of which I have received from the International Searching Authority (ISA) Form PCT/ISA/206 (“Invitation to pay additional fees and, where applicable, protest fee”), along with the results of a partial international search. The form invites me to pay five additional fees due to a finding by the ISA of lack of unity of invention, a finding which I find excessive. Nevertheless, the claims could probably have been drafted differently, in such a way that it would be clearer that there is only one single invention. Is it possible to file amendments to the claims under PCT Article 19 following the receipt of this partial search? I would like to address the unity of invention issues by amending the claims, and thereby hopefully avoid the high cost of the additional fees.

A: You cannot achieve a reevaluation of the status of your application in relation to unity of invention at this stage in the procedure. Amending the claims under PCT Article 19 is only possible once you have received the international search report (ISR) (PCT/ISA/210). What you have received is the results of a partial international search1, the receipt of which does not permit you to make amendments under PCT Article 19. The ISR in respect of your international application will not be issued until the additional fees have been paid, or until the time limit for payment of those fees has expired (one month from the date of the invitation). If you decide not to pay the additional fees, there is nothing to prevent you from informing the ISA that you have no intention of paying the additional fees; in which case the ISA may issue the ISR earlier (albeit only on the basis of the first claimed invention which is covered by the initial international search fee).

It is recalled that, according to PCT Rule 13.1, the international application must relate to only one invention or to a group of inventions so linked as to form a single general inventive concept – the requirement of “unity of invention”. Details concerning unity of invention can be found in Chapter 10 of the International Search and Preliminary Examination Guidelines at:

http://www.wipo.int/pct/en/texts/pdf/ispe.pdf

The search fee is intended to cover the cost for the ISA to carry out an international search on the international application, but only to the extent that the application meets the requirement of unity of invention. This is why the ISA is entitled to request the applicant to pay an additional search fee for each additional invention (PCT Rule 40.1). If the additional fees are not paid, the ISA will establish the ISR only on those parts of the international application which relate to the invention first mentioned in the claims, that is, it will contain the same results as those found in Form PCT/ISA/206.

Note that the additional fees can be paid under protest (PCT Rule 40.2(c)), but they will still have to be paid in advance, along with any applicable protest fee (to find out whether a protest fee is payable, see the PCT Applicant’s Guide, Annex D, for the ISA concerned), within the time limit fixed by the ISA in Form PCT/ISA/206. For further information on paying the fees under protest, see paragraphs 7.019 and 7.020 of the PCT Applicant’s Guide, International Phase.

An alternative to paying all the additional search fees would be to pay only some of them, which would result in certain parts of the international application not being searched by the ISA as it will only search the number of inventions covered by the payment. It should be possible, however, for you to specify to the ISA which claims you wish to be searched.

The lack of an international search report in respect of any unsearched parts of the international application does not, of itself, have any influence on the validity of the international application, the processing of which, including its communication to the designated Offices, continues. Nevertheless, under PCT Articles 17(3)(b) and 34(3)(c), the national law of any designated (or elected) State may provide that such unsearched parts of the international application are considered withdrawn as far as that State is concerned unless a special fee is paid by the applicant to its national Office. There are only a few Offices which apply such provisions, however. Details of special fees are given in the respective National Chapters of the PCT Applicant’s Guide.

Further opportunities to amend the claims (as well as the description and drawings) are available during the international phase under PCT Article 34 (provided that the applicant files a demand for international preliminary examination) and upon entry into the national phase under PCT Articles 28 and 41. Please note, however, that the International Preliminary Examining Authority (IPEA) need not, and generally will not, examine any claims relating to unsearched inventions (see PCT Rule 66.1(e)), even where the applicant has requested the IPEA to base the examination on any amendments under PCT Article 19 and/or 34. Similarly, in the case where an applicant requests supplementary international search to be carried out on an international application, the Authority specified for supplementary search may exclude from the supplementary search any claims which were not the subject of the international search (PCT Rule 45bis.5(d)).

For further details about the consequences of finding of lack of unity of an international application on the international preliminary examination and on the national phase, see the “Practical Advice” in PCT Newsletter No. 09/2008.

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1   It should be noted that not all ISAs will issue the results of a partial international search when sending out the invitation to pay additional fees.

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