37 CFR § 1.488 — Determination of unity of invention before the (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.488 Determination of unity of invention before the
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 1.488, including 24 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
The International Preliminary Examining Authority determines whether an international application complies with the unity of invention requirement, issuing a written opinion or inviting restriction if necessary.
What this section covers
- The process and authority of the International Preliminary Examining Authority to determine if an international application complies with the unity of invention requirement.
- The role of the International Preliminary Examining Authority in assessing unity of invention for PCT applications.
Key obligations
- If the International Preliminary Examining Authority determines that an international application does not comply with unity of invention, they may issue a written opinion.
- The written opinion must address whether the application should be considered as a single international application or as several national phase applications.
- Practitioners must ensure that any amendments or responses are in accordance with the PCT and 37 CFR.
Practice notes
- Practitioners should carefully review the claims and specification to ensure they are consistent with unity of invention before submission.
- Failing to address the unity of invention can result in unnecessary divisional applications and additional costs.
Official MPEP § 1.488 — Determination of unity of invention before the
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.488 Determination of unity of invention before the International Preliminary Examining Authority.
- (a) Before establishing any written opinion or the international preliminary examination report, the International Preliminary Examining Authority will determine whether the international application complies with the requirement of unity of invention as set forth in § 1.475 .
- (b) If the International Preliminary Examining
Authority considers that the international application does not
comply with the requirement of unity of invention, it may:
- (1) Issue a written opinion and/or an international preliminary examination report, in respect of the entire international application and indicate that unity of invention is lacking and specify the reasons therefor without extending an invitation to restrict or pay additional fees. No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority.
- (2) Invite the applicant to restrict the claims or pay additional fees, pointing out the categories of invention found, within a set time limit which will not be extended. No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority, or
- (3) If applicant fails to restrict the claims or pay additional fees within the time limit set for reply, the International Preliminary Examining Authority will issue a written opinion and/or establish an international preliminary examination report on the main invention and shall indicate the relevant facts in the said report. In case of any doubt as to which invention is the main invention, the invention first mentioned in the claims and previously searched by an International Searching Authority shall be considered the main invention.
- (c) Lack of unity of invention may be directly evident before considering the claims in relation to any prior art, or after taking the prior art into consideration, as where a document discovered during the search shows the invention claimed in a generic or linking claim lacks novelty or is clearly obvious, leaving two or more claims joined thereby without a common inventive concept. In such a case the International Preliminary Examining Authority may raise the objection of lack of unity of invention.
[52 FR 20049, May 28, 1987; para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (b)(3) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]
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- Pct Amendments Article 19
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- Pct International Preliminary Examination
- Pct International Search
- Pct National Stage Examination
- Pct Unity Invention
| MPEP Section | Rules |
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| MPEP § 1875 |