Why? What? When? How? These are some of the most used words in John’s dictionary. He’s pretty curious about the workings behind what happens in his life, and many of those have to do with the inventions and the workings of intellectual property in the world around him.
Recently, John has learned a lot more about the patent examination stage, where the patent office scrutinizes applications to see if they fulfil all the criteria laid out in the patent act. He already knows about Novelty, Inventive Step, Industrial Applicability and Allowable Subject Matter, but he has a few questions about what examiners call the Unity of Invention. IP Geek answers.
Hello IP Geek! Hope you’re all pumped up for the new year!
Today, I wanted to ask about something I’ve come across on recently. What exactly is a “unity of invention”? I was checking out a few examination reports and this term comes up a lot along with novelty and inventive step options.
Hi, John! Happy New Year to you too. I’m sure 2023 will be a good year for us all!
About the concept of Unity of Invention- it’s based on the requirement that a single patent is granted for a single invention. So your application needs to center around one invention alone, or a group of inventions all linked together by a unifying inventive concept.
To determine this, the examiner generally looks at the claims section of the application.
The claims are pretty much always the most carefully constructed part of any application. Claims may be independent (ie; they stand on their own) or dependent (ie; they refer to a previous claim). If you have more than one independent claim, chances are that your patent will get scrutinized for a lack of unity of invention. Of course, you can still have multiple independent claims if they all share the same inventive concept.
I see, that makes sense. But what do I do if my examination reply comes back and I have a unity of invention objection?
Depending on your draft, claims and how clearly drafted everything is, you may have multiple options.
You can always try to convince the examiner that the objected claims do share their inventive concept with other claims. Alternatively, you can simply choose to delete claims that you can do without, allowing the remaining unobjected claims to be registered. If neither works, you can always file for a divisional application that splits off multiple new applications from the initial application.
Oh, so that is one reason why someone might file a divisional patent. I think I got two answers today instead of one. Thank you for educating me, IP Geek! And I hope everyone has a happy 2023!
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