A lack of uniformity in unity of invention

UNity
As Israel’s leading IP blogger, I regularly get emails and phone calls from students, inventors, academics and professionals, both from Israel and abroad, about various aspects of patent and trademark practice.
Most recently, I received an interesting question on what constitutes unity of invention. The question is rather better than the answer.
All regimes require unity of invention. One is entitled to protect one invention in a single patent. There are separate issues regarding double patenting, i.e. protecting the same invention with more than one patent, but, how is a single invention determined?
The practice relates to claims and differs in different jurisdictions.
In the US, unity seems to depend on the main class that the Examiner classifies the invention as and has to search when evaluating novelty and non-obviousness. One can file up to three independent claims (regardless of type) for the same basic price. However, there is no limit on the number of independent claims in the same class, since the searching requires trawling the same material.
US Examiners love to issue restriction orders due to multiple inventions, and sometimes do this based on the figures. They may require a restriction to a product or process, but may also require an election of a preferred species where different figures show different embodiments. However, once a structure is allowed, corresponding and withdrawn method claims can be allowed and rejoined so long as the method requires using the allowed apparatus.
In Europe, the theory relates to the inventive concept to be searched. In practice one is entitled to one independent method claim and one independent apparatus claim. Anything else and the claims will be reject as ambiguous.
It will be appreciated therefore, that the same claims may be considered as having unity in US but not in Europe and vice-versus.  Indeed, with two independent method claims and two independent structure claims each with minor differences, I’d expect the USPTO examiner to want inventor to elect either method claims or structure claims, and EPO examiner to want one of each.
In Israel (and there is no logic to this – it was a circular from Previous Commissioner, Meir Noam), one is entitled for up to two claims of each type. this can be method, product, system, gene sequence (now no longer patentable anywhere else).
Examiners will require restrictions on unity considerations, but there is no clear definition of unity. If a foreign patent office allows a set of claims one can request allowance under Section 17c and the issue of unity is not a grounds for objection by examiner or in opposition. What this means is that something acceptable in the US or in Europe (or in UK, Austria, Australia and other jurisdictions recognized in Appendix B for purposes of Section 17c) is acceptable in Israel. Since US and Europe have different standards, it will be clear that there is no clear standard in Israel.
See https://blog.ipfactor.co.il/2010/02/03/israel-patent-office-to-allow-no-more-than-two-independent-claims-of-each-type/ for more information.

 

One Response to A lack of uniformity in unity of invention

  1. Freddy says:

    Good point, but you should include the far worse “overlapping patents” rejection which is related.

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