PCT International Search and Preliminary Examination Guidelines
PART III EXAMINER CONSIDERATIONS COMMON TO BOTH THE INTERNATIONAL SEARCHING AUTHORITY AND THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
Chapter 10 Unity of Invention
Process at the International Search Stage
Invitation to Pay Additional Fees
Article 17(3)(a); Rules 16, 40.1, 40.2, 42
10.60 After deciding that lack of unity exists, except in the circumstances described in paragraphs 10.64 and 10.65, the International Searching Authority informs the applicant of the lack of unity of invention by a communication, preceding (but see paragraph 10.61 below) the issuance of the international search report and written opinion of the International Searching Authority, which contains an invitation to pay additional fees (Form PCT/ISA/206). This invitation:
(i) specifies the reasons (see paragraph 10.63) for which the international application is not considered as complying with the requirement of unity of invention;
(ii) identifies the separate inventions and indicates the number of additional search fees and the amount to be paid; and
(iii) invites the applicant to pay, where applicable, the protest fee (see paragraphs 10.66 to 10.70).
The International Searching Authority cannot consider the application withdrawn for lack of unity of invention, nor invite the applicant to amend the claims, but informs the applicant that, if the international search report is to be drawn up in respect of those inventions present other than the first mentioned, then the additional fees (and the protest fee, where applicable) must be paid within one month from the date of the invitation. If the applicant wishes to pay the additional fees under protest and a protest fee is payable (see paragraphs 10.66 to 10.70), the International Searching Authority also invites the applicant to pay any such fee within one month from the date of the invitation.
10.61 If preferred, the said invitation may be already accompanied by a notification of the result of a partial international search drawn up for those parts of the international application which relate to what is to be considered as the “first” invention. The result of the partial international search will be very useful for the applicant in deciding whether additional search fees should be paid so that further parts of the international application would be subjected to the international search. The invention(s) or group(s) of inventions, other than the one first mentioned in the claims, will be searched, subject to paragraphs 10.64 and 10.65, only if the applicant pays the additional fees. Thus, whether the lack of unity of invention is directly evident a priori or becomes apparent a posteriori, the examiner, may proceed in one of two ways: he may immediately inform the applicant of his finding and invite him to pay additional search fees and any protest fee, where applicable (with Form PCT/ISA/206) and search or continue to search the invention first mentioned in the claims (“main invention”); or alternatively, he may carry out the search on the “main invention” and draw up a partial international search report which will be sent together with the invitation to pay additional search fees and any protest fee, where applicable (with Form PCT/ISA/206).
10.62 Since the applicant is given one month to make these payments before any further search will be made, the International Searching Authority should endeavor to ensure that international searches be made as early as possible after the receipt of the search copy so as to enable compliance with the time limit for establishing the international search report set by Rule 42. The International Searching Authority finally draws up the international search report and written opinion on those parts of the international application which relate to inventions in respect of which the search fee and any additional search fee have been paid. The international search report (see paragraph 16.32) and written opinion (see paragraphs 17.38 and 17.39) identify the separate inventions or groups of inventions forming unity and indicate those parts of the international application for which a search has been made. If no additional search fee has been paid, the international search report and written opinion contain only the references relating to the invention first mentioned in the claims.
10.63 In the invitation to pay additional fees, the International Searching Authority sets out a logically presented, technical reasoning containing the basic considerations behind the finding of lack of unity.
Search of Additional Inventions Without Payment of Fees
10.64 If little or no additional search effort is required, reasons of economy may make it advisable for the examiner, while making the search for the main invention, to search at the same time, despite the nonpayment of additional fees, one or more additional inventions in the classification units consulted for the main invention. The international search for such additional inventions will then have to be completed in any further classification units which may be relevant, when the additional search fees have been paid. This situation may occur when the lack of unity of invention is found either a priori or a posteriori.
10.65 When the examiner finds lack of unity of invention, normally, the applicant is invited to pay fees for the search of additional inventions. In exceptional circumstances, however, the examiner may be able to establish both an international search and a written opinion covering more than one invention with negligible additional work, in particular, when the inventions are conceptually very close. In those cases, the examiner may decide to complete the international search and written opinion for the additional invention(s) together with that for the invention first mentioned. In considering the amount of work involved, the examiner should take into account the time taken to create the written opinion as well as that needed to perform the search, since even when the analysis involved as regards the search is negligible, the opposite may be the case for the written opinion of the International Searching Authority and therefore justify requesting the additional fees. If it is considered that the total additional work does not justify requesting additional fees, all results are included in the international search report without inviting the applicant to pay an additional search fee in respect of the additional inventions searched, but stating the finding of lack of unity of invention.
Protest Procedure
10.66 The applicant may protest the allegation of lack of unity of invention, or that the number of required additional fees is excessive and request a refund of the additional fees paid. If, and to the extent that, the International Searching Authority finds the protest justified, the fees are refunded. The additional search fees must be paid for any protest to be considered. The International Searching Authority may require a protest fee to be paid in order for the protest to be considered (see paragraph 10.69).
10.67 The protest is in the form of a reasoned statement accompanying payment of the additional fee, explaining why the applicant believes that the requirements of unity of invention are fulfilled and fully taking into account the reasons indicated in the invitation to pay additional fees issued by the International Searching Authority.
Rule 40.2(c), (d); Section 403
10.68 The protest is examined by a review body constituted in the framework of the International Searching Authority, and a decision taken on it. The procedure is determined by each International Searching Authority, although the review body must not be limited to the person who made the decision which is the subject of the protest. Some Authorities may review the protest in two stages, with a review body being convened only if a preliminary review of the protest reveals that the protest is not entirely justified. To the extent that the applicant’s protest is found to be justified, the additional fees are totally or partly reimbursed. At the request of the applicant, the texts of both the protest and the decision on it are notified to the designated Offices by the International Bureau together with the international search report (see paragraph 10.70).
10.69 Details of the protest fee, if any, charged by the International Searching Authorities appear in the PCT Applicant’s Guide, Annex D. If the protest fee is not paid within one month from the date of the invitation to pay additional fees, the protest is considered not to have been made. The protest fee is refunded to the applicant under Rule 40.2(e) only where the review body finds that the protest was entirely justified. This means that, where the protest requests the reimbursement of some but not all of the additional search fees paid and all of those search fees referred to in the protest are refunded by the review body, a refund of the protest fee is also due. For example, the applicant pays four additional search fees, but in the protest only requests the refund of two of these. If both of these fees are refunded, then the protest was entirely justified and a refund of the protest fee is also due.
10.70 Where the applicant paid additional search fees under protest, he is informed promptly (using Form PCT/ISA/212) of any decision about the compliance with the requirement of unity of invention. At the same time the International Searching Authority transmits to the International Bureau a copy of the protest and of the decision thereon as well as any request by the applicant to forward the texts of the protest and the decision thereon to designated Offices.