Can an applicant protest a finding of lack of unity of invention?
Yes, an applicant can protest a finding of lack of unity of invention in a PCT application. According to MPEP 1850, the protest procedure is as follows:
- The applicant may pay the additional fees under protest.
- The protest must be accompanied by a reasoned statement explaining why the applicant believes the unity of invention requirement is fulfilled or why the required additional fees are excessive.
- The protest is examined by the Director or the Director’s designee.
- If the protest is found to be justified, the additional fees or a portion thereof will be refunded.
As stated in 37 CFR 1.477(a): “If the applicant disagrees with the holding of lack of unity of invention by the International Searching Authority, additional fees may be paid under protest, accompanied by a request for refund and a statement setting forth reasons for disagreement or why the required additional fees are considered excessive, or both.”
It’s important to note that the additional search fees must be paid for any protest to be considered, but no protest fee is due in the ISA/US.
To learn more: