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1875 MANUAL OF PATENT EXAMINING PROCEDURE
(3) If applicant fails to restrict the claims or pay additionalfees
within thetimelimit set forreply, theInternational Preliminary
Examining Authority will issue a written opinionand/or
establish an international preliminary examination report on the
main invention and shall indicate the relevant facts in the said
report. In case of any doubt as to which invention is the main
invention, the inventionfirst mentioned in the claims and previously
searched by an International Searching Authority shall be
considered the maininvention.
(c) Lack ofunity of invention may be directly evident before
considering the claims in relation to any prior art, or after taking
the prior art into consideration, as where a document discovered
during the search showsthe invention claimedin a generic orlinking
claim lacksnoveltyor is clearlyobvious,leaving two ormore
claims joinedthereby without a common inventive concept. In
such a case the International Preliminary Exaniining Authority
mayraisetheobjection of lack of unityof invention.
The examiner will usually begin the preliminary
examination by checking the international application
for unity of invention. The international preliminary
examination will only be directed to inventions which
have been searched by the International Searching
Authority. All claims directed to inventions which
have not been searched by the International Searching
Authority will not be considered by the International
Preliminary Examining Anthority. If the examiner in
the International Preliminary Examining Authority
finds lack of nnity of invention in the claims to be
examined, an invitation is normally prepared and sent
to the applicant requesting the payment of additional
fees or the restriction of the claims on Form PCT/
IPEN405. Such an invitation will inclnde the identification
of what the examiner considers to be the "main
invention" which will be examined if no additional
fees are paid or restriction is made by the applicant.
The procednre before the International Preliminary
Examining Authority regarding lack of unity of
invention is governed by PCT Article 34(3)(a)
through (c), PCT Rule 68 (see also PCT Rule 70.13),
and 37 CPR 1.475 and 1.488. It should be noted that
in most instances lack ofunity of invention will have
been noted and reported upon by the International
Searching Authority which will have drawn up an
International Search Report based on those parts of
the international application relating to the invention,
or unified linked group of inventions, first mentioned
in the claims ("main invention")-.If the applicant has
paid additional search fees, additional inventions
would also have been searched. No international preliminary
examination will be conducted on inventions
August 2001
1800-100
not previously searched by an International Searching
Anthority (37 CFR 1.488(b)(2».
Unity of invention must be addressed within 7 days
from the date the PCT application is charged to the
Technology Center from the PCT International Application
Processing Division. This simply means that a
determination must be made as to whether or not the
international application relates to one invention or to
a group of inventions so linked as to form a single
general inventive concept.
If it is determined that the international application
does meet the requirements for unity of invention and
no additional fees will be requested, the international
application must be returned to the Paralegal Specialist
or Legal Instruments Examiner in the Technology
Center so that an indication to that effect may be made
on the PALM System which monitors deadlines such
as the deadline for checking unity of invention.
If the examiner determines that unity of invention is
lacking, there are two options:
(A) The examiner may conduct an international
preliminary examination covering all the claimed and
previously searched inventions and indicate that unity
of invention is lacking and specify the reasons therefor
without extending an invitation to restrict or pay
additional fees (PCT Rule 68.1), or
(B) The examiner may invite the applicant to
restrict the claims, so as to comply with the requirement,
or pay additional fees, pointing out the categories
of invention found. The invitation to restrict or
pay additional fees shall state the reasons for which
the international application is considered as not complying
with the requirement of unity of invention.
(pCT Rule 68.2). Inventions not previously searched
will not be considered or included in the invitation.
The written opinion, if any, and the international
preliminary examination report must be established
on all inventions for which examination fees have
been paid.
If the applicant fails to reply to the invitation to
restrict the claims or pay additional examination fees
due to lack of unity of invention, the written opinion
and international preliminary examination report must
be established on the claims directed to what appears
to be the main invention (PCT Article 34(3)(c». The
main invention, in case of doubt, is the first claimed
invention for which an international search report has