patent
A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...
law
Law is a set of rules that are created and are enforceable by social or governmental institutions to regulate behavior,Robertson, ''Crimes against humanity'', 90. with its precise definition a matter of longstanding debate. It has been vario ...
s, unity of invention is a formal administrative requirement that must be met by a
patent application
A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and re ...
to become a granted patent. Basically, a patent application can relate only to one
invention
An invention is a unique or novel device, method, composition, idea or process. An invention may be an improvement upon a machine, product, or process for increasing efficiency or lowering cost. It may also be an entirely new concept. If an i ...
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 (derived from Latin word ''novus'' for "new") is the quality of being new, or following from that, of being striking, original or unusual. Novelty may be the shared experience of a new cultural phenomenon or the subjective perception of an ...
. A
divisional application A divisional patent application, also called divisional application or simply divisional, is a type of patent application that contains subject-matter from a previously filed application, the previously filed application being its parent 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.
Jurisdictions
European Patent Convention
Under
European patent
The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to w ...
practice and
case law
Case law, also used interchangeably with common law, is law that is based on precedents, that is the judicial decisions from previous cases, rather than law based on constitutions, statutes, or regulations. Case law uses the detailed facts of a l ...
, lack of unity (of invention) can appear either "''
a priori
("from the earlier") and ("from the later") are Latin phrases used in philosophy to distinguish types of knowledge, justification, or argument by their reliance on empirical evidence or experience. knowledge is independent from current ex ...
''", before the
prior art
Prior art (also known as state of the art or background art) is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria f ...
was examined, or "''
a posteriori
("from the earlier") and ("from the later") are Latin phrases used in philosophy to distinguish types of knowledge, justification, or argument by their reliance on empirical evidence or experience. knowledge is independent from current ex ...
''", after the prior art was examined. An ''a posteriori'' lack of unity usually results from a lack of
novelty
Novelty (derived from Latin word ''novus'' for "new") is the quality of being new, or following from that, of being striking, original or unusual. Novelty may be the shared experience of a new cultural phenomenon or the subjective perception of an ...
or
inventive step
The inventive step and non-obviousness reflect a 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. In other words, " henon ...
Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT) 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. A patent application filed und ...
(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".Practical Advice, The consequences of a finding by the ISA of lack of unity of invention
PCT Newsletter
The ''PCT Newsletter'' is a monthly publication of the World Intellectual Property Organization (WIPO). It contains "up-to-date news about the Patent Cooperation Treaty (PCT)", 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."''Decision of the President of the European Patent Office dated 24 June 2007 providing for review panels for the implementation of the protest procedure under the PCT'' Special edition No. 3 OJ EPO, p. 140. This decision is also referred to as: "Decision concerning the PCT protest procedure".
United States
In
U.S. patent law
Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited ...
, 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 A divisional patent application, also called divisional application or simply divisional, is a type of patent application that contains subject-matter from a previously filed application, the previously filed application being its parent 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.
References
External links
*
European Patent Convention
The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to w ...
(EPC)
**
**
*
Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT) 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. A patent application filed und ...
(PCT)
** : Unity of Invention
** : Lack of Unity of Invention (International Search)
** : Lack of Unity of Invention (International Preliminary Examination)
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Title 35 of the United States Code
Title 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 (149 of which ...