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Issue 90 | June 24, 2003
USPTO to Study PCT Unity of Invention Standard
 The United States Patent and Trademark Office ("USPTO") is seeking public comments to help guide the scope and content of a study on the adoption of a Patent Cooperative Treaty ("PCT") -style Unity of Invention standard in the U.S.  The Federal Register Notice is available on the Internet at http://www.uspto.gov/web/offices/com/sol
/notices/68fr27536.pdf
and comments must be received by the USPTO on or before July 21, 2003.

"Unity of Invention" and "Restriction" practice are mechanisms for determining whether the claims presented in an application are directed to a single invention, or to multiple inventions that must be divided into separate applications requiring separate government filing fees. According to the Notice, the primary consideration for establishing Unity of Invention is whether the claims are so linked together as to form a single general inventive concept with a common "special technical feature" that is found in each claim. Since this common feature must also make a contribution over the prior art, a prior art search is often needed before requiring withdrawal of claims for lack of Unity of Invention.  In contrast, Restriction is allowed under U.S. practice when (1) an application includes multiple independent and patentably distinct sets of inventions, and (2) it would be an undue burden to examine more than one invention in the same application. Pre-restriction prior art searches are therefore rarely conducted in the U.S. 

Furthermore, current USPTO policy allows for restriction between related inventions as well as between independent inventions. According to the Notice, adoption of a PCT-style Unity of Invention standard would prevent restriction between certain related inventions such as (1) a process, and the apparatus for carrying out the process; (2) a process for making a product, and the product made; (3) an apparatus, and the product made by the apparatus; (4) a product, and the process for using the product. In addition, a change in standard may impact quality, pendency, workload, revenue, fees, patent term adjustment, examination resources, organizational structure of the Patent Examining Corps, and the US patent classification system. The USPTO has therefore broadly identified the following ten issues for public comment:
  • Whether to allow only one independent claim per category of invention, emphasizing the examination of only independent claims, and/or changing the presumption of validity for dependent claims
  • Whether to allow applicants to pay additional fees for examination of multiple inventions in a single application, changing the patent term adjustment provisions accordingly, and revising the order in which cases are taken up for examination in order to account for the delays caused by examining multi-invention applications
  • Whether to examine only the first claimed invention where there is a holding of lack of Unity of Invention
  • Whether to conduct only partial searches where the examination of the claims is unduly burdensome due to non-prior art issues, and assessing the adequacy of the disclosure in determining whether the claims’ common feature makes a contribution over the prior art
  • Whether operation under a Unity of Invention standard will increase costs, and if so, how to allocate those increases in the current fee structure
  • Whether to adopt new techniques for multi-invention examination, such as three-person "examination division" teams similar to the EPO, expanded the use of the patentability reports in MPEP §705, or some other option
  • Whether to limit Requests for Continued Examination under the Unity of Invention standard to additional claims that either depend from, or include features of, the claims that are in condition for allowance, and whether this option should be available only for published applications
  • Whether to allow applicants to choose between filing a divisional application for a second invention or having the second invention subsequently examined in the same application upon paying an additional fee, and how offset the corresponding loss of issue and maintenance fee revenue
  • Whether to implement these changes legislatively, administratively, and/or in conjunction with current Restriction practice
To discuss this topic further, please feel free to contact the authors, Kar Yee Tse (karyee.tse@TKHR.com) and Bill Heinze, at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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