FERs and Lack of Unity

Date Published

Examiners should assess the unity of the Australian claims at each stage of examination. Examiners should not merely rely on the approach taken within the FERs, but are expected to independently assess unity in relation to Australian law and practice. Examiners should use their judgement and take a pragmatic approach to assessing unity raised (or not raised) in the FERs.

For example, examiners may consider that unity raised in a FER is based on an overly narrow, literal or technical approach. In this instance, examiners may consider not relying on this approach to unity, or may consider raising lack of unity with an alternative grouping of inventions. Examiners may need to assess whether further searching is required in light of any changes in approach to unity compared to the FERs.

However, if the objection raised in the FER is prima facie reasonable, such an objection may be relied upon and referred to in the examiner’s report.

In general, examiners are expected to conduct a search (if necessary) and examination in respect of the first claimed invention only, unless the only FERs available are directed to a later invention. In this case examination should normally be carried out in respect of this later invention, and no search and examination should be done in respect of the first claimed invention. The applicant must be advised that the search and examination of the other inventions is reserved.

However, there may be cases where this general approach is not followed and search or examination of all inventions is reserved to avoid wasted effort. For example, where the examination history of the equivalent US or EP application indicates that the applicant has asked for a later invention to be examined (in preference to the first claimed invention) and then abandoned the claims related to this later invention, this suggests that the applicant is not interested in examination of either invention. Therefore there is the possibility that any effort spent in examination of either invention by the Australian examiner could be wasted. It is reasonable in these circumstances to object to the lack of unity, reserve any further opinion and invite the applicant to indicate (possibly via appropriate amendments) which invention is to be examined.

Where a lack of unity exists, it may require only negligible additional effort to carry out examination on additional inventions. This can occur where, for example, the prior art to be considered for each invention is similar, or where earlier search results or FERs are available and at least some of the additional inventions have been searched or examined. In these circumstances, examination is to be carried out in relation to those inventions that can be accommodated with negligible additional effort. See Lack of Unity for a discussion of the factors that must be considered in making this determination.