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

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

• 6.1.4.9 Issuing the Invitation to Pay Additional Search Fees

• 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 9 Exclusions from, and Limitations of, International Search and International Preliminary Examination

  • Paragraph 9.34​​​​​​​

Related Chapters:

• 6.1.4.9 Issuing the Invitation to Pay Additional Search Fees

• 6.1.4.12 Completing the Search Report​​​​​​​

• 6.1.7.1 Claim Interpretation, Broad Claims, PCT Articles 5 and 6

• RIO - Creating invitations to pay

On this Page

• Overview

• General approach

  • Abbreviated Invitation to Pay Additional Fees

  • Comprehensive Invitation to Pay Additional Fees

  • Required reasoning for finding of lack of unity

Overview

Where it is apparent that only one general inventive concept is described and lack of unity arises merely because of claims that are not supported by the description and/or are not clear and concise, the procedures in 6.1.7.1 Claim Interpretation, Broad Claims, PCT Articles 5 and 6 are to be followed. In these circumstances a technical lack of unity may be noted in the search report as in 6.1.4.12 Completing the Search Report (see also: PCT/GL/ISPE/12 at Chapter 9, paragraph 9.34). But it not usually necessary to issue an invitation to pay additional search fees.

In other cases, in which the claims are large in number, complex, or their nature encompasses a range of separate inventions, it will be necessary to directly address lack of unity. In many such cases, due to the nature and complexity of the claims, there is a risk that the applicant will not want the first mentioned invention to be searched and/or they will disagree as to the number and identity of the inventions. As a result, the time spent in preparing the invitation to pay can be ultimately wasted if the applicant does not wish to pursue additional inventions identified.

General approach

As the specifics of each case vary, examiners should adopt a flexible approach when developing a strategy to progress these cases. Examiners should consult with their supervising examiner and develop together an approach tailored to the specific circumstances of the case. 

In general, however, preliminary consultation with the attorney of the issues surrounding the finding of lack of unity will usually result in a more efficient process and effective search strategy.

Accordingly, the following steps should be included in the strategy adopted:

1. Preliminary contact with the attorney by phone to discuss how best to progress the search. This discussion should include:

• Explaining the basis of the finding of lack of unity and discussing the justification for the additional search fees.

• Inviting the applicant to nominate what they consider to be the main invention, i.e. the invention they would prefer to be searched for the fee already paid.

2. If after discussion with the attorney (or if such discussion cannot take place), a finding of lack of unity still applies and a search encompassing the whole of the claims cannot be carried out for the single search fee already paid, the examiner should issue an invitation to pay additional search fees (ITP) using form PCT/ISR/206.

• The ITP should include a level of detailed explanation appropriate in the light of the discussion with the attorney.

• This may either be an abbreviated ITP or a comprehensive ITP, discussed below.

Abbreviated invitation to pay additional fees

An abbreviated invitation to pay additional fees can be issued where there is a fully agreed position negotiated between the examiner and the attorney on the finding of lack of unity and the invention groups identified.

An abbreviated invitation to pay additional fees need only briefly discuss:

• The inventive concept(s)

• List the inventions identified in the claims

• Any specific applicant’s comments

Rather than providing the detailed discussion of lack of unity required in a comprehensive ITP.

Comprehensive Invitation to Pay Additional Fees

A comprehensive ITP fully addresses any issues raised by the applicant or their attorney, in all other cases where an abbreviated invitation to pay additional fees is not appropriate. Page 6.1.4.9 Issuing the Invitation to Pay Additional Search Fees provides further instruction on completing ITPs.

For example, a comprehensive ITP could be required if the attorney:

• indicates disagreement with the finding on unity

• indicates additional fees will be paid under protest

• provides no comments​​​​

Required reasoning for finding of lack of unity

In all cases, examiners should record on the file sufficient information to clearly explain the basis for the finding of lack of unity and the justification for the additional search fees (either as part of the invitation or as a record of the conversation with the attorney).

Box III of the search report should clearly identify the invention(s) searched. If excluding the first mentioned invention, Box III should report that this was at the request of the applicant. For example:

‘No required additional search fees were timely paid by the applicant. Consequently, this international search report is restricted to the invention covered by claims Nos.: 10-20, at the request of the applicant.’