Unity of invention
Encyclopedia
In most patent
law
s, unity of invention is a formal administrative requirement that must be met by a patent application
to become a granted patent. Basically, a patent application can relate only to one invention
or a group of closely related inventions. The purpose of this requirement is administrative, as well as financial. That is, the requirement serves to preclude the option of filing one patent application for several inventions, while paying only one set of fees (filing fee, search fee, examination fee, renewal fees, and so on). Unity of invention also makes the classification of patent documents easier.
When a patent application is objected to on the ground of a lack of unity, it may be still considered for patent protection, unlike in the case where the invention is found to be lacking novelty
. A divisional application
can usually be filed for the second invention, and for the further inventions, if any. Alternatively, a patent prosecutor may make a technical argument that there is unity of invention.
practice and case law
, lack of unity (of invention) can appear either "a priori", before the prior art
was examined, or "a posteriori
", after the prior art was examined. An a posteriori lack of unity usually results from a lack of novelty
or inventive step
of the subject-matter of one independent claim
.
(PCT), an international application, which is also called PCT application, "shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept". If the requirement of unity of invention is not met, the International Searching Authority (i.e., the patent office in charge of carrying out the international search) "is entitled to request the applicant to pay an additional search fee for each invention beyond the first which is to be searched".
In reaction to such a request from the International Searching Authority (ISA), the applicant may pay all or some of the requested additional search fees, and the International Searching Authority (ISA) then establishes the international search for all or some of the inventions or groups of inventions, respectively. The applicant may also decide not to pay any of the additional search fees, and, in such case, the ISA does not carry out a search for the inventions or groups of inventions for which no search fees have been paid. The international search report (ISR) is then established only for the first claimed invention.
If the applicant disagrees with the ISA’s finding of lack of unity of invention, the additional fees may be paid under protest. In the protest procedure, the applicant files a reasoned statement explaining why it considers that the requirement of unity of invention has been complied with, or that the number of additional fees required is excessive. After payment of the additional search fees and, if required, of a protest fee, the protest is examined by a review body. If the review body finds the protest justified, it orders the total or partial reimbursement of the additional search fees, and, if applicable, the protest fee, to the applicant. When, for instance, the European Patent Office acts as ISA, the review body in charge of examining the protest consists of three members: "the head of a directorate, normally the head of the directorate by which the invitation to pay additional fees was issued, an examiner with special expertise in unity of invention and, normally, the examiner who issued the invitation."
, applications that claim more than one distinct invention may be subject to restriction to a single invention, and the applicant may prosecute the remaining invention(s) by filing a divisional application(s). A "restriction requirement" will typically present the different inventions based on the claims within the application, and the applicant may elect which invention he would prosecute.
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
law
Law
Law is a system of rules and guidelines which are enforced through social institutions to govern behavior, wherever possible. It shapes politics, economics and society in numerous ways and serves as a social mediator of relations between people. Contract law regulates everything from buying a bus...
s, unity of invention is a formal administrative requirement that must be met by a patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
to become a granted patent. Basically, a patent application can relate only to one invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
or a group of closely related inventions. The purpose of this requirement is administrative, as well as financial. That is, the requirement serves to preclude the option of filing one patent application for several inventions, while paying only one set of fees (filing fee, search fee, examination fee, renewal fees, and so on). Unity of invention also makes the classification of patent documents easier.
When a patent application is objected to on the ground of a lack of unity, it may be still considered for patent protection, unlike in the case where the invention is found to be lacking novelty
Novelty (patent)
Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
. A divisional application
Divisional patent application
A divisional patent application is a type of patent application which contains matter from a previously filed application...
can usually be filed for the second invention, and for the further inventions, if any. Alternatively, a patent prosecutor may make a technical argument that there is unity of invention.
European Patent Convention
Under European patentEuropean Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
practice and case law
Case law
In law, case law is the set of reported judicial decisions of selected appellate courts and other courts of first instance which make new interpretations of the law and, therefore, can be cited as precedents in a process known as stare decisis...
, lack of unity (of invention) can appear either "a priori", before the prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
was examined, or "a posteriori
A Posteriori
Apart from the album, some additional remixes were released exclusively through the iTunes Store. They are:*"Eppur si muove" – 6:39*"Dreaming of Andromeda" Apart from the album, some additional remixes were released exclusively through the iTunes Store. They are:*"Eppur si muove" (Tocadisco...
", after the prior art was examined. An a posteriori lack of unity usually results from a lack of novelty
Novelty (patent)
Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
or inventive step
Inventive step under the European Patent Convention
Under the European Patent Convention , European patents shall be granted for inventions which inter alia involve an inventive step. The central legal provision explaining what this means, i.e. the central legal provision relating to the inventive step under the EPC, is...
of the subject-matter of one independent claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
.
Patent Cooperation Treaty
Under the Patent Cooperation TreatyPatent Cooperation Treaty
The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
(PCT), an international application, which is also called PCT application, "shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept". If the requirement of unity of invention is not met, the International Searching Authority (i.e., the patent office in charge of carrying out the international search) "is entitled to request the applicant to pay an additional search fee for each invention beyond the first which is to be searched".
In reaction to such a request from the International Searching Authority (ISA), the applicant may pay all or some of the requested additional search fees, and the International Searching Authority (ISA) then establishes the international search for all or some of the inventions or groups of inventions, respectively. The applicant may also decide not to pay any of the additional search fees, and, in such case, the ISA does not carry out a search for the inventions or groups of inventions for which no search fees have been paid. The international search report (ISR) is then established only for the first claimed invention.
If the applicant disagrees with the ISA’s finding of lack of unity of invention, the additional fees may be paid under protest. In the protest procedure, the applicant files a reasoned statement explaining why it considers that the requirement of unity of invention has been complied with, or that the number of additional fees required is excessive. After payment of the additional search fees and, if required, of a protest fee, the protest is examined by a review body. If the review body finds the protest justified, it orders the total or partial reimbursement of the additional search fees, and, if applicable, the protest fee, to the applicant. When, for instance, the European Patent Office acts as ISA, the review body in charge of examining the protest consists of three members: "the head of a directorate, normally the head of the directorate by which the invitation to pay additional fees was issued, an examiner with special expertise in unity of invention and, normally, the examiner who issued the invitation."
United States
In U.S. patent lawUnited States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, applications that claim more than one distinct invention may be subject to restriction to a single invention, and the applicant may prosecute the remaining invention(s) by filing a divisional application(s). A "restriction requirement" will typically present the different inventions based on the claims within the application, and the applicant may elect which invention he would prosecute.
See also
- PatentabilityPatentabilityWithin the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
- NoveltyNovelty (patent)Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
- Inventive step and non-obviousnessInventive step and non-obviousnessThe inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
- Industrial application
- Sufficiency of disclosureSufficiency of disclosureMost patent law systems require that a patent application disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the...
External links
- European Patent ConventionEuropean Patent ConventionThe Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC) - Patent Cooperation TreatyPatent Cooperation TreatyThe Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
(PCT)- : Unity of Invention
- : Lack of Unity of Invention (International Search)
- : Lack of Unity of Invention (International Preliminary Examination)
- Title 35 of the United States CodeTitle 35 of the United States CodeTitle 35 of the United States Code is a title of United States Code regarding patent law. The sections of Title 35 govern all aspects of patent law in the United States. There are currently 37 chapters, which include 376 sections , in Title 35.Federally recognized forms of intellectual property are...
(35 U.S.C.)