INTRODUCTION (provided by Julian Crump)

The issue of unity of invention particularly arises following the proposal at the 6th session of WIPO's Standing Committee on the Law of Patents (SPC) by the US for a working group on multiple invention disclosures and complex applications. Under the US proposal, the working group would have the following four objectives:

1. Reduce the burden on the examiner. Offices are overworked, and the backlogs seem to be growing.
2. Focus the prosecution of an application on a single invention, to expedite the classification and information content of the patent.
3. Develop a practice for limiting claims in applications that is easy to understand, and can be applied consistently in practice and that is fair to the applicants.
4. Considers the long-term viability of these practices for future needs.

The working group's first meeting will occur in May 2002 at the SCP's 7th session.

SUMMARY OF ITEMS DISCUSSED AT THE WORKSHOP

Discussion began with a summary of the fundamental characteristics of the PCT and EP "unity of invention" standard and the US "independent and distinct" standard. Delegates also provided a summary and some history of the practices in Norway, Japan, Finland and the Netherlands.

Much discussion was had on the particular concerns of the effects of restriction practice in the US, including:

1. The US should at least allow both apparatus and process claims in the same case, while this does not always occur in practice.
2. It was questioned whether the US "compact prosecution" impacts restriction practice, encouraging Examiners to issue restriction requirements.
3. While the US standard includes consideration of the "burden on the Examiner", it was suggested that this should not be the most important consideration on this issue.

Any unity of invention standard needs sufficient flexibility to permit coverage of what the Applicant considers "the invention". It was noted that applicants typically simply would like one patent on what the applicant has "invented". This includes the need for a number of independent claims to sufficiently cover an invention, such as coverage of an invention used locally on a computer or over the Internet.

It was noted that for there to be real harmonisation in patent practice, applicants need to be able to better predict how the unity of invention will be applied in the various countries.

There seemed to be general agreement that a useful system must balance the interests of:

1. The Patent Office costs of searching and prosecuting claims.
2. Applicants need for flexibility to fully claim an invention.
3. Clarity and predictability for third parties.

In balancing these interests, many in the workshop agreed that both applicants and the patent offices could be satisfied with a system that provided applicants with greater flexibility to cover inventions with different types of claims (perhaps using a functional approach to viewing claims to an invention), combined with some fee structure to compensate the patent offices for the additional work required for those claims. It was suggested that the payment of an extra fee to obtain examination of more claims in a single application would reduce the work of the patent offices now required to simply process divisional applications.

As a concern with this approach, it was suggested that permitting applicants to obtain different types of claims in a single application could make it more difficult for third parties to conduct accurate searches for relevant patents because the titles might only be related to one of several types of claims in a patent. But it was considered that such concerns could be addressed by proper classification of granted patents and by requiring titles to identify all of the different kinds of claims in a patent.

It was finally noted that a proposal to reduce the need for divisional applications by providing a fee structure to obtain search and examination of additional claims would need to consider possible concerns by the patent offices on the impact on revenue, in that, a reduction in the number of divisional patents would reduce annuity fee incomes to the patent offices.