United States Patent and Trademark Office OG Notices: 17 June 2003
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: 2003-P-018]
Request for Comments on the Study of the Changes Needed to
Implement a Unity of Invention Standard in the United States
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice; request for comments.
SUMMARY: The United States Patent and Trademark Office (USPTO) has
established a 21st Century Strategic Plan to transform the USPTO into a
quality-focused, highly productive, responsive organization supporting
a market-driven intellectual property system. As part of this plan, the
USPTO will conduct a study of the changes needed to implement a Patent
Cooperation Treaty (PCT) style Unity of Invention standard in the
United States. Prior to starting a detailed study, the USPTO is seeking
public comment on a number of issues to help guide the scope and
content of a study on the adoption of a Unity of Invention standard in
the United States.
Comment Deadline Date: To be ensured of consideration, written comments
must be received on or before July 21, 2003. No public hearing will be
held at this stage of the study.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: unity.comments@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments-Patents,
Commissioner for Patents, PO Box 1450, Alexandria, VA 22313-1450; or by
facsimile to (703) 872-9411, marked to the attention of Robert Clarke.
Although comments may be submitted by mail or facsimile, the USPTO
prefers to receive comments via the Internet. If comments are submitted
by mail, the USPTO would prefer that the comments be submitted on a DOS
formatted 3 1/2 inch disk accompanied by a paper copy.
The comments will be available for public inspection at the Office
of Patent Legal Administration, Office of the Deputy Commissioner for
Patent Examination Policy, located at Room 3D65 of Crystal Plaza 3/4,
2201 South Clark Place, Arlington, Virginia, 22202, and will be
available through anonymous file transfer protocol (ftp) via the
Internet (address: http://www.uspto.gov). Since comments will be made
available for public inspection, information that is not desired to be
made public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Robert A. Clarke directly by phone at
(703) 305-9177, by e-mail at robert.clarke@uspto.gov, by facsimile to
(703) 305-1013, marked to the attention of Robert A. Clarke, or by mail
addressed to: Mail Stop Comments-Patents, Commissioner for Patents, PO
Box 1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: The Unity of Invention standard (in PCT
applications) and United States restriction practice (in United States
applications) are mechanisms by which the USPTO determines whether
patent applicants are entitled to examination of all of the claims in
an application by determining whether the claims are directed to a
single invention, or to multiple inventions that are capable of
supporting separate patents.
The Unity of Invention standard is a component of many foreign
patent laws and is also used in international search and preliminary
examination proceedings conducted pursuant to the PCT.
United States restriction practice is based on 35 U.S.C. 121, which
provides that: "[i]f two or more independent and distinct inventions
are claimed in one application, the Director may require the
application to be restricted to one of the inventions." This allows
examiners to limit applicants to one set of patentably indistinct
inventions per application. The USPTO may "restrict" the application
to one set of patentably indistinct inventions: (1) If the application
includes multiple independent and patentably distinct sets of
inventions, and (2) if there is an undue burden to examine more than
one invention in the same application. Restriction practice was
designed to balance the interest of granting an applicant reasonable
breadth of protection in a single patent against the burden on the
USPTO of examining multiple inventions in a single application.
Current USPTO policy allows for restriction between related
inventions as well as between independent inventions. However, if the
USPTO adopts a Unity of Invention standard, restriction would, as a
general rule, no longer be permitted between certain related inventions
that currently may be restricted under United States restriction
practice. Some examples of related inventions that are often filed
together and typically can be restricted under current United States
practice before a prior art search is conducted, but do not lack unity
under the Unity of Invention standard, include: (1) A process, and the
apparatus for carrying out the process; (2) a process for making a
product, and the product made; (3) an apparatus, and the product made
by the apparatus; (4) a product, and the process of using the product.
A lack of Unity of Invention is different from restriction practice
in some major aspects. Unity of Invention is practiced, with slight
variations, in PCT applications and in applications examined by the
European Patent Office (EPO) and the Japan Patent Office (JPO). The
primary consideration for establishing Unity of Invention is that the
claims are entitled to be examined in a single application if the
claims are so linked together as to form a single general inventive
concept, premised on the concept of a common feature (referred to as a
"special technical feature" in the context of PCT Rule 13) that can
be present in multiple inventions within a single application. As long
as the same or corresponding common feature is found in each claim and
that common feature makes a contribution over the prior art, the claims
comply with the requirement for Unity of Invention. If the inventions
lack a common feature that makes a contribution over the prior art,
then a holding of lack of Unity of Invention would be proper. The
determination of whether an invention makes a contribution over the
prior art can effectively be done only after a prior art search for the
common feature has been performed.
Adoption of any of the various styles of Unity of Invention
practice will likely have significant impacts on current USPTO
examination practices and organization. The degree of the impacts will
depend upon the particulars of how the Unity of Invention standard is
implemented. A complete study will need to consider, at a minimum, the
impacts and changes to: quality, pendency, workload, revenue, fees,
patent term adjustment, examination resources, organizational structure
of the Patent Examining Corps, and the United States patent
classification system.
Issues for Comment
Issue 1: Unity of Invention as practiced in the EPO is interlinked
to EPC-style claim drafting and EPO claim treatment practice, including
certain limitations on claiming that are not present in current United
States patent practice. For example, the EPO (under EPC rule 29(2))
usually allows only one independent claim per category of invention
(category of invention is that of product, process or apparatus of
use), and emphasizes the search and examination of independent claims.
In contrast, the USPTO searches and examines every claim, independent
and dependent, and every limitation of every claim. In addition, EPC-
style claim drafting is generally termed "central claiming". In
central claiming, the inventive concept is essentially claimed in the
independent claim. If the independent claim is found allowable, the EPO
examination will not be unduly concerned with respect to the dependent
claims, according to EPO Guidelines, C-III, 3.6.
Should the USPTO study ways to adopt EPO claim treatment practice,
including normally allowing only one independent claim per category of
invention, when considering ways to adopt a Unity of Invention
standard, and why?
Should the USPTO emphasize the examination of independent claims
and modifying the examination of dependent claims in the same fashion
as the EPO?
If so, would there be any reason to consider changes to the
presumption of validity under 35 U.S.C. 282 of those dependent claims?
Issue 2: In United States restriction practice, the applicant can
file a subsequent application that is directed to an invention that was
divided out of the parent application. These are called Divisional
applications. Divisional applications are typically subsequently filed
and are not normally examined concurrently with the parent application.
Divisional applications retain the benefit of the filing date of the
original application if the conditions set forth in 35 U.S.C. 120 are
met. This allows an applicant to continue to pursue protection for the
inventions subject to restriction that were in the original application
without being affected by double patenting. All member states of the
Paris Convention for the Protection of Industrial Property (1967)
(including Japan and all EPC member states), as well as the EPO, also
provide for the filing of Divisional applications. However, the PCT
does not yet provide for the filing of Divisional international
applications. Consequently, the PCT rules provide for applicant to pay
for the search and examination of additional inventions that "lack
unity" in a single international application. Adoption of a Unity of
Invention standard could, in some instances, require examining more
inventions during the examination of a single application than occurs
presently, thereby possibly causing delay in the examination of other
applications if examination resources are limited. This could increase
the USPTO's average patent pendency time.
If the USPTO adopts a Unity of Invention standard, should the USPTO
provide applicants the option of a PCT-style Unity of Invention
practice to pay for additional inventions that lack Unity of Invention
in the same application?
If so, should the USPTO consider any changes to patent term
adjustment under 35 U.S.C. 154(b) for applications which have more
inventions examined in a single application under a Unity of Invention
standard than are permitted under current practice?
In view of the fact that examining multiple inventions in a single
application could cause examination delay in other applications, what
other revisions to patent term adjustment provisions under 35 U.S.C.
154(b) should be considered by the USPTO, or
should the USPTO also consider revising the order that cases are taken
up for examination?
Issue 3: Under the PCT, examination proceeds on the basis of the
first claimed invention if applicant does not pay for additional
inventions that lack unity.
Should the USPTO adopt, for national applications, the practice
currently used under the PCT of examining the first claimed invention
where there is a holding of lack of Unity of Invention?
Optionally, where Unity of Invention is lacking: (1) Should the
USPTO examine the first claimed product, or the first claimed invention
if there are no product claims; or (2) should applicant be given the
opportunity to elect an invention to be examined?
Issue 4: A determination of lack of Unity of Invention is
predicated on assessing whether a common feature (referred to as a
"special technical feature" in the context of PCT Rule 13) defines a
contribution over the prior art. Certain PCT member states assess this
requirement only with respect to patentable advances over prior art.
However, issues of lack of support, enablement, clarity, or
conciseness, generally resulting from excessive breadth of claims or
excessive numbers of claims, may occur that render examination unduly
burdensome. In such circumstances, some International Authorities will
make a "partial search" declaration to limit the extent of search and
examination. The USPTO does not follow this practice. On the other
hand, it may be viewed that if the common feature or "special
technical feature" is not adequately supported by the disclosure or
lacks utility ("industrial applicability" in the PCT context), the
special technical feature does not make a contribution over the prior
art.
When adopting the Unity of Invention standard, should the USPTO
follow the practice of performing only a "partial search" if the
examination of the entire scope of the claims is unduly burdensome due
to non-prior art issues?
Alternatively, should the USPTO assess adequacy of the disclosure
and industrial applicability in addition to the prior art when
determining whether the claims' common feature makes a contribution
over the prior art?
Issue 5: The USPTO's 21st Century Strategic Plan is predicated on a
certain level of revenue to provide the resources needed to meet
quality and timeliness goals. The Plan currently does not account for
any additional resource requirements, and any corresponding revenue
shortfalls, that may result from adopting a Unity of Invention
standard. Statutory fees under 35 U.S.C. 41(a) and (b), in the
aggregate, are set to cover USPTO operating costs. If the average cost
of processing patent applications goes up, the USPTO will need to
increase fees. Assuming that there will be extra costs of examination
under Unity of Invention, possible increases would be: (1) All filing
fees; (2) all filing fees and an additional fee for examination of
claims that lack Unity of Invention with an elected invention; (3)
increased issue and/or maintenance fees of all applications; (4)
increased issue and/or maintenance fees for applications paying the
additional invention fee; or (5) a combination of two or more of (1)
through (4) above.
Which of the above approaches should the USPTO propose in regard to
any fee increases?
Issue 6: Adopting a Unity of Invention standard would impact the
number of inventions that would be examined in a single application,
and require examining multiple inventions that cross multiple
disciplines in a single application. Due to the current level of
technical specialization in the Patent Examination Corps, the USPTO
will have to consider the impact any change would have on the ability
of the USPTO to maintain high quality examination.
How should work be assigned to ensure that examination quality
would not suffer if examiners have to examine multiple inventions from
different disciplines in a single application?
Should the USPTO consider: (1) Using team examination, similar to
the EPO where applications are examined using three-person teams called
"examination divisions" (2) extending the use of patentability report
procedures provided for in section 705 of the Manual of Patent
Examining Procedure (8th ed. 2001) (Rev. 1, Feb. 2003); (3) maintaining
the current process of a single examiner on an application; or (4)
using some other option of how work is performed by examiners?
Issue 7: One way of adopting aspects of Unity of Invention without
making any statutory changes would be for the USPTO to use its
authority under the continued examination provisions of 35 U.S.C.
132(b) (authorizes request for continued examination or RCE practice)
to permit applicants to pay an RCE fee and submit or rejoin claims to
additional inventions after prosecution has been closed on a first
invention, so long as the claims presented with the RCE fee either
depend from or otherwise include the features of the allowed claims
which make a contribution over the prior art. In this option, most
applications will continue to be examined under the USPTO's current
restriction practice. Under any new provisions to implement this
option, when a claim is determined to be allowable, the applicant would
be entitled to request continued examination under the Unity of
Invention standard. The required submission would be additional claims
that either depend from or otherwise include the features of the
earlier-examined claims that are in condition for allowance (if such
additional claims were not previously pending in the application).
Should the USPTO consider this option?
Should this option be available only to applicants whose
applications are published?
If so, how should the new RCE fee be set relative to the current
fee structure?
Issue 8: As a second example of adopting aspects of Unity of
Invention without making any statutory changes, the USPTO could use its
authority under continued examination to permit requests that the USPTO
continue examination of claims which were withdrawn from consideration.
This option would require applicants to make a decision to request
continued examination rather than file a divisional application, to pay
a fee for the treatment of one additional invention, and to present
claims drawn only to that additional invention. This option would be
available in addition to the continuing option of filing a divisional
application.
Should the USPTO consider this option?
If so, how should the loss in issue and maintenance fee collections
be offset relative to the current structure?
Issue 9: In view of the previous questions and the range of issues
and options, should the USPTO consider: (1) Seeking a change to 35
U.S.C. 121 to adopt a Unity of Invention standard (and if so, what
would such statutory change be, including whether such a statute would
provide for applicants to pay for additional inventions that lack Unity
of Invention to be examined in the same application); (2) maintaining
the current restriction practice in the USPTO; and/or (3) modifying the
USPTO rules and procedures to adopt aspects of Unity of Invention
practice without making any statutory changes (if so, in what manner
should rule changes be made)?
Issue 10: Do you have other solutions to offer which are not
addressed in this notice?
May 9, 2003 JAMES E. ROGAN
Under Secretary of Commerce for
Intellectual Property and, Director of the
United States Patent and Trademark Office