Drafting a patent specification can be a long-wound and tedious process that requires a lot of technical and legal expertise. More specifically, drafting the claims require an expert eye. The claims need to be drafted with care. You must ensure that you disclose the invention in such a way that a person of ordinary skill in that area must be able to reproduce the invention. Now, if you have just one independent claim, then there is no issue at all. If you have more than one independent claim, then your patent application will be examined for unity. In this article, we will discuss the concept of the unity of invention under the Patent Cooperation Treaty [PCT], the European Patent Convention, and in the US and India.
What is the Unity of Invention?
By rule, a patent application can relate to only one invention or a group of closely related inventions, such that the inventions, when linked together, must form a single general concept. Thus, as the name suggests, the unity of inventions means that the inventions in the patent specification must be so closely related to each other that they form one common concept.
What is the need for the Unity of Invention?
Common sense dictates that there are two reasons for the requirement of unity of invention. One is an administrative reason, and the other is a financial reason. Administratively, having one invention per patent makes it easier to classify the patents according to the technological field they belong to. Financially, you cannot patent different inventions at the cost of just one patent. So, for these reasons, the concept of the unity of invention is of utmost importance.
What happens if your claims do not have the Unity of Invention?
It is imperative to know that a lack of unity of invention is not fatal. In the sense that your patent application will not get rejected for the sole reason that the claims lack unity. However, after the examination of your application, if the Examiner feels that there is indeed no unity of invention, then you could be asked to rectify the application. Remedying the situation can be done in the following ways:
1. Unifying the multiple independent claims, i.e., presenting one independent claim instead of numerous independent claims.
2. Canceling the offending claims. Separate divisional applications may be filed for the offending claims at extra costs.
3. Presenting a technical argument that there is a unity of invention.
Unity of Invention under the Patent Cooperation Treaty
Rule 13.1 of the PCT states that “The international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”).” Rule 13.2 further states that the requirement of unity of invention will be fulfilled when there is a technical relationship between the inventions that involve one or more of the same or corresponding special technical features. Essentially, under the PCT, the unity of invention is a must. The inventions in the claims must be such that they relate to one single invention.
If the unity of invention requirement is not met, then the International Searching Authority [ISA] will request you to pay an additional search fee for each new invention, apart from the first invention, which is to be searched. Once you pay the extra search fee, the ISA will conduct a patent search for all the inventions. However, if you d not pay the additional search fee, then the ISA will not perform a search for the inventions for which the fee has not been paid. Thus, the search will only be conducted for the first claimed invention in your specification. And the search report will be issued accordingly.
In case you disagree with the decision of the ISA, you can file a protest fee along with a reasoned statement stating the reasons as to why your international application complies with the unity of invention requirement or that the additional fee requested is too excessive. A review body will examine this protest. After review, the review body, to the extent that it considers justified will direct for the partial or total reimbursement of the additional fee. This clause is embodied in Rule 40 of the Patent Cooperation Treaty.
European Patent Convention
According to Article 82 of the European Patent Convention, a European Patent Application shall relate to one invention only or to a group of inventions so linked so as to form a single general inventive concept.
Rule 44 of the Convention further elaborates that the inventions must be linked to form a single general concept. This is possible only if there is a technical relationship between the claimed inventions involving one or more of the same or corresponding special technical features.
Under the European Patent Convention, a lack of unity may become evident before considering the claims in relation to any prior art or after reviewing the claims concerning the prior art. A lack of unity after considering the application concerning a prior art may happen if, on the comparison, an independent claim is shown to lack novelty. Then the dependent claims are left without a common inventive concept, thus affecting the unity of invention.
After the Search Division forms an opinion about the unity of invention in your application, you will be informed if the Search Division feels that there is no unity of invention and the number of additional fees you will have to pay to get all the inventions searched. Similar to the PCT, even under the European Patent Convention, if you do not pay the additional fee, the only consequence is that the search will only be conducted for the first claimed invention. Further, the Examining Division may order a refund of the additional fee, upon your request, provided it feels that the demand for additional fees was not justified.
United States
According to the Manual of Patent Examining Procedure, a patent application can relate to only one invention or to a group of inventions so closely linked so as to form a single general inventive concept. 1.475 of MPEP further lists out combinations where the inventions are considered to have unity:
* A product and a process specially adapted for the manufacture of said product; or
* A product and process of use of the said product; or
* A product, a process specially adapted for the manufacture of the said product, and use of the said product; or
* A process and an apparatus or means specifically designed for carrying out the said process; or
* A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Also, in the US, there is something called the restriction requirement. If the Examiner believes that there is more than one invention in the application and that these inventions can be patented distinct from each other, then the Examiner will issue a list of groups of inventions and provide a reason as to why they are different from each other. You have to choose one invention from the group then. The other invention will be considered withdrawn, and you can file a divisional application for the withdrawn invention at extra cost. While rendering your choice of invention, you can raise an objection and state why the inventions are not distinct. But if the restriction requirement is reiterated, then the other invention will stand withdrawn.
India
According to Section 10(5) of the Indian Patent Act, the claim/ claims of a complete specification shall relate to a single invention or to a group of inventions so linked so as to form a single inventive concept. Section 16 provides the remedy for an application containing more than one invention. Section 16 allows for the division of the application. Therefore you can file a divisional application if your first application has more than one invention. Please note that the divisional application must contain a complete specification along with the requisite fee. However, the complete specification of the divisional application cannot have any reference to the claims in the specification of the first application. The date of filing of the divisional application will be the same as that of the first application. It is important to note that the divisional application has to be filed before the grant of a patent to the first application.
Unity of invention is thus an essential requirement across jurisdictions, and you have to keep this in mind while drafting your patent specification. It is based on the concept of ‘one patent one invention.’ Unity of invention is more or less similar across all jurisdictions. While a lack of unity will not result in the rejection of your application, most jurisdictions will request you to file divisional applications in order to separate the patent claims. For this reason, it is always better to engage professional help in drafting your patent specification.
