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The "Invitation to restrict or pay additional fees" Form PCT/IPEA/405 is used to invite the applicant, at his/her option, to restrict the claims to comply with the requirements of unity of invention or to pay additional examination fees. In addition, the examiner must explain the reasons why the international application is not considered to comply with the requirement of unity of invention. The examiner must also specify, on Form PCT/IPEA/405, at least one group or groups of claims which, if elected, would comply with the requirement for unity of invention.
In the space provided on form PCT/IPEA/405, the examiner should identify the disclosed inventions by claim numerals and indicate which disclosed inventions are so linked as to form a single general inventive concept, thereby complying with the requirement of unity of invention. For example, claims to different categories of invention such as a product, claims to a process specifically adapted for the manufacture of the product and a claim for a use of the product would be considered related inventions which comply with the unity of invention requirement, whereas a claim to an apparatus for making the product in the same application would be considered a second invention for which additional fees would be required. The reasons for holding that unity of invention is lacking must be specified. See 37 CFR 1.475 and Annex B of the Administrative Instructions.
Also, the examiner should specify the main invention and claims directed thereto which will be examined if the applicant fails to restrict or pay additional fees. The main invention, in case of doubt, is the first claimed invention or related invention before the International Preliminary Examining Authority for which a search fee has been paid and an international search report has been prepared.
The examiner should indicate the total amount of additional fees required for examination of all claimed inventions.
In the box provided at the top of the form, the time limit for response is set according to PCT Rule 68.2, normally a 1 month time limit. Extensions of time are not permitted.
Since the space provided on Form PCT/IPEA/405 is limited, supplemental attachment sheets, supplied by the examiner, with reference back to the specific section, should be incorporated whenever necessary.
Form PCT/IPEA/405 must be signed by an examiner with at least partial signatory authority.
Telephone practice may be used in certain cases to allow applicants to elect an invention to be examined or to pay additional fees. Additional fees may be charged to a deposit account using the telephone practice only if:
(A) The Demand for International Preliminary Examination included an authorization to charge additional fees to a deposit account,
(B) Applicant or the legal representative or agent orally agrees to charge the additional fees to the account, and
(C) A complete record of the telephone conversation is included with the written opinion including:
(1) Examiner's name;
(2) Authorizing attorney's name;
(3) Date of conversation;
(4) Invention elected and/or inventions for which additional fees paid; and
(5) Deposit account number and amount to be charged.
If applicant or the legal representative or agent refuses to either restrict the claims to one invention or authorize payment of additional fees, Form **>PCT/IPEA/405< should be prepared and mailed to applicant.
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 further orally advise applicant that any protest to the holding of lack of unity or the amount of additional fee required must be filed in writing no later than one month from the mailing date of the written opinion or the international preliminary examination report if the lack of unity holding is first mailed with the IPER because there was no written opinion. The examiner should fill in the information on Form **>USPTO/499< "Chapter II PCT Telephone Memorandum for Lack of Unity" as a record of the telephonic holding of lack of unity.
(a) An international and a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept ("requirement of unity of invention"). Where a group of inventions is claimed in an application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
(b) An international or a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
(c) If an application contains claims to more or less than one of the combinations of categories of invention set forth in paragraph (b) of this section, unity of invention might not be present.
(d) If multiple products, processes of manufacture or uses are claimed, the first invention of the category first mentioned in the claims of the application and the first recited invention of each of the other categories related thereto will be considered as the main invention in the claims, see PCT Article 17(3)(a) and § 1.476(c).
(e) The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1. In order for all inventions to be examined, the appropriate additional examination fees must be paid.
Begin all Lack of Unity actions with this heading.
Group [1], claim(s) [2], drawn to [3].
Group [4], claim(s) [5], drawn to [6].
Group [7], claim(s) [8], drawn to [9].
1. In brackets 1,4 and 7, insert Roman numerals for each Group.
2. In brackets 2, 5 and 8, insert respective claim numbers.
3. In brackets 3, 6 and 9, insert respective names of grouped inventions.
Group [1], claim(s) [2], drawn to [3].
Group [4], claim(s) [5], drawn to [6].
This form paragraph may be used alone or following form paragraph 18.06.
Group [1], claim [2], drawn to [3].
This form paragraph may be used following either form paragraph 18.06 or 18.06.01.
The inventions listed as Groups [1] do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: [2]
1. In bracket 1, insert appropriate Roman numerals for Groups involved.
2. In bracket 2, insert reasoning.
This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In order for more than one species to be examined, the appropriate additional examination fees must be paid. The species are as follows:
[1]
In bracket 1, list each species by Fig. No. or embodiment.
The claims are deemed to correspond to the species listed above in the following manner:
[1]
The following claim(s) are generic: [2]
1. This form paragraph is to be used immediately following 18.16.
2. In bracket 1, for each species, list the claims, e.g., Fig.1 - claims 1, 3 and 6.
3. In bracket 2, identify each generic claim by number or insert the word --NONE--.
The species listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, the species lack the same or corresponding special technical features for the following reasons: [1]
1. This form paragraph is to be used immediately following form paragraph 18.17.
2. In bracket 1, insert reasoning.
35 U.S.C. 371 Applications
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
1. This form paragraph is to be used when making a restriction requirement in an application filed under the provisions of 35 U.S.C. 371.
2. This form paragraph is to be followed by form paragraphs 18.06 through 18.06.02, as appropriate, and by form paragraph 18.07.
35 U.S.C. 371 Applications
This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
[1]
Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise include all the limitations of an allowed generic claim as provided by 37 CFR 1.141. If claims are added after the election, applicant must indicate which are readable upon the elected species. MPEP § 809.02(a).
1. This form paragraph is to be used when making an election of species requirement in an application filed under the provisions of 35 U.S.C. 371.
2. In bracket 1, list each species by Fig. No. or embodiment.
3. This form paragraph is to be followed by form paragraphs 18.17 and 18.18.
35 U.S.C. 371 Applications
Newly submitted claim [1] directed to an invention that lacks unity with the invention originally claimed for the following reasons: [2]
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim [3] withdrawn from consideration as being directed to a nonelected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
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