Broadly stated, a patent can only be granted for a single invention.
This is legislated in Australia under Section 40(4) of the Patents Act 1990, which states that ‘The claim or claims must relate to one invention only.’ Australian Examiners, when assessing the unity of an application, begin from this point and follow the rules as they are applied under the Patent Cooperation Treaty (PCT) Rules, specifically Rule 13. Further detail is provided by the Australian Patent Examiners Manual, and the PCT International Search and Preliminary Examination Guidelines (PCT ISPEG).
Rule 13 of the PCT
The ISPEG rules apply specifically to the PCT but are also followed by Australian Examiners. When checking for unity, the Examiners check for a ‘special technical feature’ that needs to be shared by every claim. This special technical feature is a claim feature that represents a contribution over the prior art. If there are multiple features (in the Examiner’s view) that accomplish this, then the claims are considered to contain multiple inventions, and therefore an application may receive a lack of unity objection. Alternatively, if there are no features with a ‘contribution’ then the Examiner will consider the dependent claims. Usually, the independent claims would contain the unifying features, so if the independent claim has already been dismissed, the features of each dependent claim have the possibility of being considered an individual invention (if they are able to make a contribution over the prior art!)
So, What Defines a Contribution?
The PCT ISPEG states that unity of invention is considered with respect to novelty and inventive step, which are of course two of the most fundamental considerations in patent examination. If the feature that could have been the special technical feature is considered to lack novelty or an inventive step, then the lack of unity is considered to exist a posteriori (reasoned from facts or observation). From a certain point of view, this is a convenient objection to receive, because novelty and inventiveness must be responded to on their own merits anyway. So it may be that a feature is found to lack novelty and inventiveness initially, and therefore triggers a lack of unity objection. But as prosecution proceeds, that feature may be reconsidered to be novel and inventive, restoring unity to the invention.
Because of the above circumstances, unity of invention is often considered a secondary objection that it may be more prudent to only address once the other, more critical objections – like novelty and inventiveness – have been addressed.
Lack of unity may also exist a prori. That is, it might be quite clear on the face of it that there are several inventions present, even before resorting to a search of the prior art.
The PCT ISPEG illustrates a priori and a posteriori unity objections with reference to a theoretical application with features A, X, and Y. In one case, the independent claims may cover A+X, A+Y, and X+Y. Because no single feature is covered by every claim, the claims must be considered to lack unity a priori. However, if the claims are to just A+X and A+Y, then the claims share the special technical feature of A, and do not lack unity. That is, unless A is determined to lack novelty and inventiveness after a search or examination, in which case there is lack of unity a posteriori.
What to do About a Unity Objection
In the early stages of prosecution, when there is perhaps other novelty, inventiveness, patentable subject matter, etc., objections raised along with a lack of unity objection, it is usually prudent to prioritise efforts dealing with these other objections in the first instance. It may well be that by resolving novelty and inventiveness in particular, the unity objection is addressed as a matter of course for a posteriori reasons. Another option may be to elevate a feature from a dependent claim to an independent claim, thereby establishing it as the special technical feature.
Another strategy is to separate out the inventions and file for several divisional applications that contain one invention each. It may actually be valuable to deliberately include multiple inventions within an initial provisional filing as a cost-effective way of securing the earliest possible priority date for each invention. The disclosures of the initial provisional application can then be spun off into multiple divisional applications.
A potentially big problem with a lack of unity invention is that the Examiner will usually only do a search for one of the cited inventions. This may lead to surprise citations relatively late in prosecution, extending the process in an unexpected way.
Unity of Invention: Important Takeaways
Overall, lack of unity is a relatively common objection to receive at one stage or another during the course of the prosecution of a patent. Although not as fundamental to the process as some other factors, unity must be adhered to. Nonetheless, there are many possible options to pursue in overcoming such an objection.
If your patent is facing an objection to do with unity of invention, or you have questions about how the rules apply while filing your application, please get in contact with MBIP. Our patents team are always happy to use their up-to-date patent law expertise to assist.
Image source: Freepik Man reading a book. education, academic, learning and exam concept. | Free Photo
