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Author Topic: How to prevent rejection due to lack of unity of invention?  (Read 546 times)

Patentstudent

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Let's assume that we have invented an improved hammer.
The hammer includes ten novel and non-obvious features that are all aimed at improving the usability of the hammer.
The features include for example (hypo):
- the hammer is double headed and one head is made of steel (to hammer on nails) and the other from rubber to hammer on something without damaging it
- the handle of the hammer comprises a special recess for one's thumb, which makes holding and using the hammer easier
- etc.
If indeed all the features improve the usability of the hammer, what should we pay special attention to (or what are the do's and dont's) in order to prevent a rejection due to lack of unity of invention when including and claiming all ten features in one application?

Thank you again for your valued views. 
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Robert K S

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Re: How to prevent rejection due to lack of unity of invention?
« Reply #1 on: 04-13-18 at 11:17 am »

Are we in the EPO?
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This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

Patentstudent

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Re: How to prevent rejection due to lack of unity of invention?
« Reply #2 on: 04-13-18 at 11:59 am »

Hi Robert K S.
Yes, we are.
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still_learnin

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Re: How to prevent rejection due to lack of unity of invention?
« Reply #3 on: 04-13-18 at 04:00 pm »

- the hammer is double headed and one head is made of steel (to hammer on nails) and the other from rubber to hammer on something without damaging it
- the handle of the hammer comprises a special recess for one's thumb, which makes holding and using the hammer easier
...
If indeed all the features improve the usability of the hammer, what should we pay special attention to (or what are the do's and dont's) in order to prevent a rejection due to lack of unity of invention when including and claiming all ten features in one application?

I don't know enough about "unity of invention" to comment, but for the benefit of other readers I'll say something about the analogous doctrine in the US, i.e., restriction.

Restriction is likely if you split the different features among different claims, e.g., first independent with steel head plus rubber head and second independent with recess in handle. Those particular features are different enough that they would be viewed as different inventions, and thus restricted.

So if you don't want a restriction in the US, you need to make sure each independent claim includes all the high-level different features.

The flip side is, of course, that a single claim that includes 2 vastly different features is much narrower, and thus less valuable, than two different claims each with one of the features. Only you (and your client) can decide which option makes the most sense for you.
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Toot Aps Esroh

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Re: How to prevent rejection due to lack of unity of invention?
« Reply #4 on: 04-13-18 at 05:10 pm »

You have to be able to argue that there is a technical feature common among each independent claim.  This can't be something picayune, though, such as the presence of a routine prior art handle on your hammer being in each claim.

If you have some feature that provides novelty* BUT which you don't mind being present in each independent along with that other novel feature you are really focusing the claim on, you may be able to provide such arguments.  I'm talking about something that is novel but doesn't really give up much in the way of scope.

By the way, I've seen file histories where there were 4- and 6-way unity objections successfully argued (sometimes after multiple shots on goal, wearing the examiner down, as it were) where I was basically shaking my head thinking, "this isn't going to work".  More often, though, the examiner has carefully considered the unity objection and isn't going to budge absent an amendment that aligns the independent claims with such a special technical feature.

* I may be mischaracterizing the standard for what makes a "special technical feature" and if so hopefully someone will correct this part.
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Patentstudent

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Re: How to prevent rejection due to lack of unity of invention?
« Reply #5 on: 04-16-18 at 07:47 am »

still_learning and Toot Aps Esroh, thank you for your replies.
I guess I will try to use one indepedent claim with the novel features that all embodiments will need and claim the additional features in dependent claims. 
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