6.1.4.9 Issuing the Invitation to Pay Additional Search Fees

Also in this Chapter:

• 6.1.4.1 Unity of Invention Background

• 6.1.4.2 Determining Lack of Unity

• 6.1.4.3 Combinations of Different Categories of Claims

• 6.1.4.4 Markush Practice

• 6.1.4.5 Intermediate and Final Products in Chemical Applications

• 6.1.4.6 Biotechnological Inventions

• 6.1.4.7 Single General Inventive Concept

• 6.1.4.8 A Priori and A Posteriori Lack of Unity

• 6.1.4.10 Unsupported, Unclear, Long and/or Complex Claim Sets

• 6.1.4.11 Payment of Additional Search Fees Under Protest

• 6.1.4.12 Completing the Search Report

• 6.1.4.13 Time for Completing the Search Report

• 6.1.4.14 Reported Decisions -Unity

• 6.1.4.15 Other Decisions on Unity from the EPO

Key Legislation:

PCT ISPE Guidelines:

• Chapter 10 Unity of Invention

  • Paragraphs 10.21– 10.59

  • Paragraph 10.61

  • Paragraph 10.65

  • Paragraph 10.74

Regulations under the PCT:

• Rule 6.2 References to Other Parts of the International Application

• Rule 40.1 Invitation to Pay Additional Fees; Time Limit

Patent Cooperation Treaty (PCT):

• Article 17 Procedure Before the International Searching Authority

• Article 48 Delay in Meeting Certain Time Limits

Patents Regulations:

• Schedule 7 Fees

Related Chapters:

• 6.1.4.10 Unsupported, Unclear, Long and/or Complex Claim Sets with Clear Lack of Unity

• 6.1.4.14 Reported Decisions

• 6.1.6 Subjects to be Excluded from the Search

• 6.1.7.3 PCT Articles 5 and 6

• Annex E

• Create Correspondence task (including Invitation to Pay Additional Fees)

On this page

• Deciding whether to invite additional search fees

  • When to invite additional search fees

  • When prior art is partly known

  • Groups of inventions for additional search fees

  • Multiple inventions with partial search results

• Issuing an Invitation to Pay Additional Search Fees

  • Level of explanation required in an ITP

  • Reporting on excluding claims for reasons other than lack of unity

• Carrying out the search when issuing an ITP

Deciding whether to invite additional search fees

An invitation to pay additional search fees (ITP) is not necessarily issued when lack of unity is found. If it is possible to complete the search and produce an International Search Opinion (ISO) for both or all inventions with minimal additional search effort (that is, ‘negligible additional work,’ see PCT/GL/ISPE/12 at paragraph 10.65) then an invitation should not be issued.

When to invite additional search fees

As a guide, if the extra work entailed in searching for and examining an additional invention is estimated to entail ‘significant additional effort’, then an invitation should be issued.

Common circumstances in which a search / examination is likely to require ‘significant additional effort’ include:

• the different inventions require a search in different IPC sub-groups (or search areas) which are of significant size

• the different inventions are not sufficiently close in subject matter to avoid significant additional effort in searching them (even if the search is carried out in the same search area)

• the claiming structure (the number of independent claims and the manner of appendance) is such as to require the expenditure of significant additional effort in examining them

When prior art is partly known

It may not always be necessary to request additional search fees when lack of unity is found a posteriori, such as when most of the search has already been done. However, where documentary evidence can be quickly located (for example, in the Australian search material) which establishes the lack of novelty, and it is otherwise justified in light of the above, an invitation to pay additional fees may be considered.

Groups of inventions for additional search fees

In some cases, it may require a modest or insignificant amount of additional effort to search one or more additional inventions in an application (that is, ‘negligible additional work,’ see PCT/GL/ISPE/12 at paragraph 10.65), but a search of all inventions in the application would place an undue burden upon the Office. In such cases it may be possible to group inventions together and request a separate fee for the search and examination of each group. However, lack of unity will be reported on in the International Search Report (ISR) and International Search Opinion (ISO) with respect to each invention, rather than each group of inventions.

Multiple inventions with partial search results

If the situation arises where an application includes more than one invention and at least one of the inventions is covered by an earlier search, a refund may be applicable as per the processes in Annex S. However, an additional search fee for the invention(s) not covered by the earlier search may be required.

If an examiner determines that additional searching is required for the other invention(s), examiners are required to issue the ITP as per the normal circumstances to cover the additional search effort required. Once the ITP process has been followed and the search report and opinion have been completed, a refund should be considered as per the normal process for the invention(s) covered by the earlier search.

Issuing an Invitation to Pay Additional Search Fees

When an examiner has decided to issue an invitation to pay additional search fees, the examiner will complete form PCT/ISA/206, and gain approval from their supervising examiner following the procedures listed in the RIO for Patents Manual (Create Correspondence task). The supervising examiner is the authorised officer for an invitation to pay.

The time limit for a response to an invitation is one month (see Rule 40.1).

If an invitation to pay additional search fees is issued, RIO will automatically update the CSC due date to reflect 12 weeks from receipt of the search copy by the ISA.

Level of explanation required in an ITP

The invitation to pay additional search fees must be accompanied by a logically presented, technically reasoned statement of the basic considerations behind the finding of lack of unity. The ITP must be fully inform the applicant of the considerations that have led to the decision that there is lack of unity. It is not sufficient to merely list the inventions contained in the application if the applicant cannot infer from this list alone that the inventions do not relate to a single inventive concept, other than in the circumstances referred to in 6.1.4.10 Unsupported, Unclear, Long and/or Complex Claim Sets with Clear Lack of Unity.

See also:

• 6.1.4.14 Reported Decisions, in particular, Heat Exchanger/SCHICK OJ EPO 2/1987, 63

• PCT/GL/ISPE/12 at paragraph 10.74

The explanation should also include the basis for the number of additional search fees invited and, where applicable, indicate which inventions can be searched with another without requiring a separate search fee. Examiners should note that the correct number of additional search fees is one less than the number of inventions, provided work entailed in searching for and examining each extra invention is estimated to be ‘significant additional effort.’ The amount of search fees is as given in Schedule 7 part 3 of the Patents Regulations.

As a guide to the level of explanation required, the reason for lack of unity should be clear solely by reference to the relevant claims and the explanation. If lack of unity is raised a posteriori, the explanation must include reference to the relevant citation(s). 

Annex E illustrates the level of detail required.

Paragraphs 10.21 - 10.59D of the PCT International Search and Preliminary Examination Guidelines shows examples concerning unity of invention.

Reporting on excluding claims for reasons other than lack of unity

If the application contains claims that are directed to matter that the Australian Patent Office is not required to search, or that fail to comply with the prescribed requirements to the extent that a meaningful search cannot be carried out (see Article 17(2) and 6.1.6 Subjects to be Excluded from the Search, box 3 of the invitation to pay additional fees should be checked and the unsearchable claims noted.

If the examiner expects that search and examination of any of the inventions would be significantly restricted due to issues pertaining to Articles 5 and 6 (see 6.1.7.3 PCT Articles 5 and 6), such matters may briefly be explained in the invitation to pay additional fees.

All claims relying on references to the description or drawings (in particular, omnibus claims), except in those cases where it is absolutely necessary, will fail to meet the requirements of Rule 6.2(a). Hence, no search or opinion is to be established for these claims. This circumstance is required to be mentioned on the form PCT/ISA/206 by:

• Checking Box 3 and indicating which claims have been found to be unsearchable

• Inserting the text ‘The claims do not comply with Rule 6.2(a) because they rely on references to the description and/or drawings.’ directly below

Carrying out the search when issuing an ITP

Generally, having issued the invitation to pay additional search fees, the search is to be conducted (or continued) in respect of the invention first mentioned in the claims (see Article 17(3)(a)).

However, where under the procedure of 6.1.4.10 Unsupported, Unclear, Long and/or Complex Claim Sets with Clear Lack of Unity, the applicant has asked that an invention other than the first mentioned invention be searched, the search may proceed on that basis. Searches of any other identified inventions should not proceed until an additional fee or fees have been paid.

In all cases the search report must clearly indicate the parts of the application that were and were not searched.

Note that the guidelines in paragraph 10.61 of the PCT International Search and Preliminary Examination Guidelines suggest that the invitation to pay additional search fees be accompanied by a partial search report in relation to the invention first mentioned in the claims. This is not current Office practice.

If additional fees are paid in respect of one or more of the further inventions the additional searches and examinations should be arranged and completed as soon as possible. Where the additional fee or fees are paid outside the time provided for in the invitation, the examiner should refer the case to the Supervising Examiner. The Supervising Examiner should consider:

• The applicability of Article 48 of the PCT

• The appropriateness of resetting the time allowed in the invitation before any additional searches and examinations are commenced

Subject to this, an additional search and examination is to be conducted only if the fees are paid within the time allowed. Fees paid outside this time are refunded (Fuel Products/LUBRIZOL OJ EPO 5/1988, 182).