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[dbmax]

At least the European patent office also holds that claims that have not been searched during PCT (or - if applicable - during the extended European Search after PCT) will not be examined, and can only be furthered when a divisional application is filed with such claims.

"Claims" or "Inventions"?

Can new or amended claims to the same invention not be added to an EPC app without division if supported in the spec?

If not, how does that affect the answer here? http://www.intelproplaw.com/ip_forum/index.php/topic,15690.0.html

Thanks for your insights,

db

[bartmans]

"Claims" or "Inventions"?

Indeed, this should be understood as 'Inventions", ore, to stick more to the text of the EPC "unsearched subject matter".

And indeed you may add claims to the same invention (if there is basis in the application as filed).

Regards.

[JustAnotherExaminer]

Technically, all claims that are properly rejected under prior art lack unity with one another.  Lack of unity is a sort of "at the discretion of the examiner" type of thing.

So, once you've searched and analyzed and provided a prima facie case for unpatentability of a claim, you can refuse to search and analyze the claim?  Seems a bit silly to me.

And, I'm sure there's some authority somewhere for that.  I'm sure the PCT doesn't say that whatever the examiner wants to do is cool.

Regards.

I didn't create the concept of posteriori lack of unity, don't blame me. 

If everything is within the art, then none of the claims can possibly have a common special technical feature. 

But practically, when an examiner is doing a posteriori lack of unity, he only is finding the common elements and thus it will save him some time.  So I use it to force applicant to amend the independents to mirror one another (except for statutory class). Maybe independent 1 and independent 2 are mirrored except that independent 2 has an additional trivial limitation x.  But x is something I'd need to find new art for.  Instead of finding new art I'll just write up a quick lack of unity between 1 and 2 with the art I've already found (and will be using for the rejection of independent 1).

Tactics for your response in such a scenario:
1: You could amend x into independent 1 and I'd be forced to find the new art.
2: I've tipped my hand on what is probably the best art I have. In your response to the lack of unity you should drastically amend both independent 1 and independent 2 such that they mirror each other, and also such that they overcome the art I used to prove posteriori lack of unity.  By doing this, you basically get a free round of prosecution (because posteriori lack of unitys generally must be sent out as a Restriction Only OA, ie not examined on merits).

Food for thought.

[dbmax]

Just...

Very useful info.

One might think an obvious way to minimize this kind of problem would be to list the most restricted claim first.

Thanks,

db 

[JimIvey]

Tactics for your response in such a scenario:
1: You could amend x into independent 1 and I'd be forced to find the new art.
2: I've tipped my hand on what is probably the best art I have. In your response to the lack of unity you should drastically amend both independent 1 and independent 2 such that they mirror each other, and also such that they overcome the art I used to prove posteriori lack of unity.  By doing this, you basically get a free round of prosecution (because posteriori lack of unitys generally must be sent out as a Restriction Only OA, ie not examined on merits).

Food for thought.

Indeed, food for thought.

Thanks.

[dbmax]

One might think an obvious way to minimize this kind of problem would be to list the most restricted claim first.

On further analysis this strategy could lead either to the undoing of a-posteriori-lack-of-unity or to the Euroization of the PCT.

Where an applicant might have submitted a simple independent Claim 1 followed by nine relatively simple  dependent claims, he is now forced to submit ten verbose independent claims with the most restricted claim first.

This is bad for everybody, especially the examiner who has to wade through all this crap.

But rather than back off the policy, I (groundlessly) fear the PCT will eventually adapt the European policy of allowing only one independent claim per category. That will be bad for the applicant, who will be stuck with a lack-of-unity rejection if his single independent claim is insufficiently restricted. He will no longer be able to list the most restricted claim first, unless he choses to waste a claim category doing so. And, because of the tight PCT timetable, he will presumably have only one shot at correcting the defect, having to guess at the proper level of restriction.

db

[JustAnotherExaminer]

One might think an obvious way to minimize this kind of problem would be to list the most restricted claim first.

That doesn't matter after it hits national stage, IIRC.  You can choose any of the inventions in national stage, whereas in international stage you're forced to choose first claimed.

[dbmax]

JAE,

My suggested strategy of putting the most restricted claim first was intended to reduce the impact of a-posteriori-lack-of-unity rejection of an app ostensibly claiming a single invention.

1) By putting the claims in order of decreasing restriction, the applicant presumably maximizes the number of claims that get examined before the process is interupted by a demand for more fees.

2) If your most restricted claim is rejected for lack of novelty, then you can guess that the others lack novelty as well.

3) An applicant who leads with the least restricted claim (as is common in US practice) risks getting no more than one claim examined.

db

PS: The results of the international examination might be of little concern, except that, with recent changes to EPC rules (which I have not digested), a regional applicant's options may hinge on which claims have been examined at the international stage.

 

[john122]

2) If so, is this contrary to the way other offices interpret PCT?

At least the European patent office also holds that claims that have not been searched during PCT (or - if applicable - during the extended European Search after PCT) will not be examined, and can only be furthered when a divisional application is filed with such claims.

Regarding the original question about lack of unity: there is a difference between a priori and a posteriori lack of unity. A posteriori lack of unity can be found when the general concept is found to lack novelty or inventive step. Consider the following claims:
1. A widget comprising a metal.
2. A widget according to claim 1, wherein the metal is Au (gold).
3. A widget according to claim 1, wherein the metal is Ag (silver).

The novelty of claim 1 could be destroyed if the prior art would show a widget with iron. Then claims 1 and 2 would be deemed to lack unity and a rejection/restriction (depending on the country where the application is examined) would be issued.

Bartmans:  Thanks for the help.  I wasn't completely sure whether I understood "unity of invention" but your post helped .  The example that you gave is similar to the situation I have at hand, except that I have 3 independent method claims.  Each independent claim are similar, except for a slight variation.  For example:

1.  A method for making a widget comprising: connecting a circle to a square.
2.  The method of claim 1, wherein the circle is blue.
3.  The method of claim 1, wherein the square is red.
4.  The method of claim 1, wherein the circle has a diameter of X.

5.  A method for making a widget comprising: connecting a blue circle to a square.
6.  The method of claim 5, wherein the square is red.

7.  A method for making a widget comprising: connecting a blue circle to a red square.

The examiner rejects each independent claim in view of prior art and lack of "unity of invention." 
The foreign counsel suggested that I amended independent claim 1 and independent claim 5 to be a mirror image of independent claim 7. 
Additionally, the foreign counsel suggested that I amend all the independent claim to recite the limitations of claim 4.

It's my understanding that I can traverse the art rejection by arguing that the prior art fails to teach or suggest independent claims 1, 5, and 7.  If I succeed in arguing the art rejection, does the "unity of invention" go away also?

What options do I have in responding to the rejection without substantially limiting the invention?

Thanks for the help.

[bartmans]

What options do I have in responding to the rejection without substantially limiting the invention?

While still in the international phase, and within the time limit set by the "Invitation to pay extra search fees" (normally 1 month) you could file a protest against the non-unity decision (with which you should pay at least one additional search fee, and, if applicable, a protest fee). For the legal basis of this arrangeemnt, see PCT Rule 40 (http://www.wipo.int/pct/en/texts/rules/r40.htm#_40). If the protest is successful, you will get the additional search fee (and protest fee) reimbursed.
If you are past this time limit, the International Searching Authority is finished and no more options are available during the international phase (any later International preliminary examination will be restricted to the searched subject matter, Rule 66(1)(e) PCT).
Thus, you will be left only with the option of fighting the lack of unity decision during the national phase. There, it will vary from country to country how and when this would be possible.

Regards.

[dbmax]

any later International preliminary examination will be restricted to the searched subject matter, Rule 66(1)(e) PCT)

Thanks Bartmans, that was the cite I was missing. Although "may be restricted" would be more accurate, that seems to be the basis of the US policy.

The remaining unanswered question is:

If rather than traverse, John amends claim 1 to overcome the prior art, would the amended claim 1 be considered a claim to a new invention, such that

1) the ISA would refuse to search it without an additional fee? or
2) the IPEA would refuse to examine it, if the amended claim had not been searched by the ISA?

Anyone?

Thanks,

db

[bartmans]

In John's example claim 1 was searched (and found to lack novelty, which led to the non-unity). Thus, it should be possible to amend claim 1 during IPEA. If that would solve the matter, then also the lack of unity objection would be obsolete. This then would be overcoming the lack of unity objection without the payment of additional search fees.
However, you risk the chance that tghe amendment would not suffice to make claim 1 novel and inventive. In that case - since you did not file a protest to the non-unity decision - you forfeited the chance to protest, and you will have to enter the national phase with only the searched claims. There, again, you could argue that amended claim 1 is patentable.

Thus, it would be more prudent to protest the lack-of-unity finding by paying the extra search fee, and file an amended claim 1. It is my opinion that an Examiner will revisit his lack-of-unity decision on this amended claim 1. Further, this option will also be cheaper than filing a demand, especially when successful 9since you will get your extra search fee and protest fee reimbursed).

Regards.

[dbmax]

Thanks, Bartmans.

Very instructive.

In that case - since you did not file a protest to the non-unity decision - you forfeited the chance to protest, and you will have to enter the national phase with only the searched claims.

This could form the basis of a separate thread in itself.

db