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.