6.3.8.5 Box IV Unity of Invention

Also in this Chapter:

• 6.3.8.1 Front Page and Notification Application Details

• 6.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs

• 6.3.8.3 Box II Priority

• 6.3.8.4 Box III Non-Establishment of Opinion with Regard to Novelty, Inventive Step & Industrial Applicability​​​​​​​

• 6.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability

• 6.3.8.7 Box VI Certain Documents Cited

• 6.3.8.8 Box VII Certain Defects

• 6.3.8.9 Box VIII Certain Observations

Key Legislation:

Administrative Instructions under the PCT:

• s206 Unity of Invention

Regulations under the PCT:

• Rule 13 Unity of Invention

• Rule 66 Procedure before the International Preliminary Examining Authority

• Rule 68.1 No Invitation to Restrict or Pay

• Rule 68.2 Invitation to Restrict or Pay

• Rule 88 Amendment of the Regulations

PCT ISPE Guidelines:

• Chapter 10 Unity of Invention

  • Paragraph 10.75 Process at the International Preliminary Examination Stage

  • Paragraph 10.78 Protest Procedure

• Paragraphs 17.38, 17.39

• Paragraph 17.62​​​​​​​​​​​​​​

Related Chapters:

• 6.1.4 Unity of Invention

• 6.1.4.9 Issuing the Invitation to Pay Additional Search Fees

• Annex F - Invitation to Restrict or Pay Additional Fees

• Creating invitations to pay (ITPs)

• RIO - Processing PCT Tasks - Box IV

On this page

• Overview

• Circumstances related to issuing an invitation to pay additional fees

  • Where an invitation to pay additional fees should not be issued by an IPEA

  • Where an invitation to pay additional fees may be issued

  • Process to issue an invitation to pay additional fees

  • Amount of detail in an invitation to pay additional fees

• Time considerations

  • Claims not restricted or additional fees not paid within the time allowed

  • Additional fees paid under protest

• Lack of Unity in ISO, IPEO, and IPRPII forms

Overview

The requirements for unity of invention are specified in Rule 13 and discussed fully in 6.1.4.1 Unity of Invention Background.

Where lack of unity of invention is evident, it may, depending on the circumstances, be appropriate to issue an ‘Invitation to Restrict or Pay Additional Fees’, forms PCT/ISA/206 and PCT/IPEA/405. Note that separate invitations apply during International Search and Preliminary Examination stages. This issue should be considered at the earliest possible opportunity due to the strict time limits for establishing the International Search Report and International Search Opinion (ISR/ISO) and International Preliminary Report on Patentability Chapter 2 (IPRPII). See Rule 13, Rule 66, Rule 68, Ad. Inst. 206, and PCT/GL/ISPE/12 at Chapter 10 for further information.

Circumstances related to issuing an invitation to pay additional fees

The circumstances in which an International Searching Authority (ISA) should issue an invitation are discussed in 6.1.4.9 Issuing the Invitation to Pay Additional Search Fees.

Where an invitation to pay additional fees should not be issued by an IPEA

An invitation to pay additional fees should not be issued by an International Preliminary Examining Authority (IPEA) where:

• the ISA has not raised the issue of lack of unity

• the ISA raised the issue of unity and additional fees were not paid.

Note that international preliminary examination is not applicable to claimed inventions that were not the subject of the ISR.

In the case where the ISA raised the issue of unity and additional fees were not paid, examination is to proceed in respect of those claims which were searched. Additionally, the International Preliminary Examination Opinion (IPEO) or IPRPII should clearly specify for the other claims that no ISR is available and thus no meaningful opinion can be given (PCT/GL/ISPE/12 at paragraph 17.62). This should be done by inserting a comment similar to PERP [T25] following the observations on lack of unity in item 3 of Box IV.

Where an invitation to pay additional fees may be issued

An invitation to pay additional fees may be issued for a PCT application undergoing international preliminary examination where either of the following apply.

• The ISA raised the issue of lack of unity and the applicant paid additional search fees for further searching and examination.

• The ISA found there was lack of unity but did not invite additional search and examination fees for additional inventions.

The decision on whether to issue an Invitation in these circumstances is somewhat discretionary. It should be based on likely additional effort involved and hence costs incurred in considering the additional invention(s).

The following may be relevant to the decision:

• The number of citations relevant to each invention.

• Whether citations are common to different inventions.

• The number and nature of claims for each invention.

• The perceived effort needed to deal with each invention through the examination stage (opinions and report).

As a guide, if the overall additional effort involved to examine an additional invention is estimated to require more than about 2 hours of time over the first invention then an invitation should be issued.

Process to issue an invitation to pay additional fees

Where it is considered that an invitation to pay additional fees should issue, the examiner will complete form PCT/IPEA/405 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 and the time limit for a response to an invitation is one month (Rule 68.2).

Amount of detail in an invitation to pay additional fees

The invitation must include a logically presented, technically reasoned statement setting out the basis for the finding of lack of unity. The requirements in this regard are the same as specified in 6.1.4.9 Issuing the Invitation to Pay Additional Search Fees.

The invitation must also include at least one possible restriction of the claims which would avoid the objection of lack of unity. The invitation should also include the basis for the number of additional examination fees invited and, where applicable, indicate which inventions can be examined with another without requiring a separate examination fee.

Annex F - Invitation to Restrict or Pay Additional Fees illustrates the required level of detail.

Time considerations

As the applicant's response will determine which of the claimed inventions will be examined, the international preliminary examination should be largely deferred until a response is filed or the time limit for response expires.

Issuing an invitation does not change the time limit for establishing the report.

Claims not restricted or additional fees not paid within the time allowed

If the applicant fails, within the time allowed, to restrict the claims or pay the additional fees, the international preliminary examination should proceed in relation to the main invention. Where the main invention is not readily apparent, examination should proceed with the invention first mentioned in the claims. Otherwise, the examination is to be carried out for those claimed inventions for which fees are paid or for the invention defined in the restricted claims. See PCT/GL/ISPE/12 at paragraph 10.75.

Additional fees paid under protest

Where the applicant pays the additional fees under protest, the PCT unit will forward the case to the Assistant General Manager (AGM) with responsibility for the section where the protest occurred. The AGM will arrange for the protest to be reviewed by an independent supervising examiner. Based on this review and the examiner’s comments, the AGM will decide whether the applicant’s protest should be upheld. The international preliminary examination should proceed in relation to all the claimed inventions for which fees are paid. See PCT/GL/ISPE/12 at paragraph 10.78.

A protest may be upheld and the fees refunded (fully or in part), for several reasons including:

• Having regard to the facts of the case and the PCT Rules, there is no lack of unity.

• The invitation fails to give either sufficient or substantially correct reasons for the finding of lack of unity and the lack of unity is not manifestly obvious from the claims themselves.

• The amount of the additional fees, in the circumstances, is excessive.

For information on refund of fees, see Annex S - Refund of Search Fees and 6.1.4.11 Payment of Additional Search Fees Under Protest.

Lack of Unity in ISO, IPEO, and IPRPII forms

If a lack of unity of invention is identified, this observation must be included in the ISO, all IPEOs and the IPRPII regardless of whether an invitation has been issued.

If no lack of unity has been found, then no observation on lack of unity is required in Box IV of the ISO, IPEO and IPRPII  – unless an entry has been required to be made in item 1 of Box IV of IPEO or IPRPII.

Item 1 of Box IV of the IPEO and IPRPII (Annex M and Annex N) has:

In response to the invitation to restrict or pay additional fees the applicant has, within the applicable time limit:

• restricted the claims

• paid additional fees

• paid additional fees under protest and, where applicable, the protest fee

• paid additional fees under protest but the applicable protest fee was not paid

• neither restricted the claims nor paid additional fees

Consequently, checkbox IV at the front page of the opinion or report, should only be crossed if Box IV of the opinion or report contains an observation. See Rule 68.1 and PCT/GL/ISPE/12 at paragraphs 17.38 and 17.39.

In cases where the ISA found a lack of unity when establishing the ISR/ISO and issued an invitation to pay additional fees, there is no requirement to check item 1 of Box IV of the IPEO or IPRP, unless the IPEA also issued a further (i.e. separate) invitation to pay additional fees. If the IPEA did not issue a further invitation for additional fees, item 1 of Box IV should be left blank.