Can the unity of invention requirement be addressed over the phone?
Yes, the unity of invention requirement can be addressed over the phone in certain circumstances. This is known as telephonic restriction practice. According to MPEP 1875.01, telephone practice may be used if:
- The applicant or their legal representative has a USPTO deposit account
- They orally agree to charge additional fees to the account
- A complete record of the conversation is included with the written opinion or international preliminary examination report
The MPEP states: “When the telephone practice is used in making lack of unity requirements, it is critical that the examiner orally inform applicant that there is no right to protest the holding of lack of unity of invention for any group of invention(s) for which no additional examination fee has been paid.“
The examiner must also advise the applicant that any protest must be filed in writing within one month. A form called “Chapter II PCT Telephone Memorandum for Lack of Unity” (Form USPTO/499) is used to record the telephonic holding of lack of unity.
To learn more: