[Pct] Weird unity of invention issue

[Dan Feigelson]

David, sounds like a typo in the WOISA. If you send me the ISR, WOISA and
IPRP, I'll call the Israel PTO tomorrow morning when it opens (it's now 6
PM here) and see if they can issue a corrected document that doesn't say
"lack of unity of invention".  But it seems to me that you're good to go
anyway, seeing as how they didn't ask for extra fees and searched
everything anyway.

Dan

On Sun, Feb 4, 2024 at 5:09 PM David Boundy via Pct <pct at oppedahl-lists.com>
wrote:

> Is there a unity of invention issue here, or not?  I have about three
> weeks left in the 30-month PCT lifetime--what should I do?  If I request
> corrected examination papers from ISA/IL, will ISA/IL does so, and if they
> do, does it buy me anything?
>
> PCT Art. 17(3)(a) says "If the ISA considers that the international
> application does not comply with the requirement of unity of invention as
> set forth in the Regulations, it *shall* invite the applicant to pay
> additional fees."
>
> ISA/Israel didn't do what it "shall" do.
>    * August 2021: priority date, US provisional application
>    * August 2022: PCT application filed, ISA/IL, fewer than 20 claims all
> apparatus, two independent claims to legitimately different inventions
>    * December 2022, Search Report and Written Opinion:
>       -- the Written Opinion says the magic words "lacks unity of
> invention" but gives no explanation
>       -- neither the Written Opinion nor any other paper has ever invited
> payment of additional fees.
>       -- the Search Report searches all claims, the Written Opinion
> examines all claims
>    * December 2023: IPRP examines all claims, gives favorable novelty,
> inventive, industrial -- the only issue is a statement "no unity of
> invention" and still no invitation to pay additional fees
>
> Shoot.  I should have noticed the incongruity in 2022, but I didn't
> challenge it then.  Now what?  Can I instruct my JP and EP colleagues to
> note that ISA/IL did not properly raise a unity problem, so the claims
> oughtta stay together?  Do I have options in JP national / EP regional
> phase?
>
> Thanks
>
>

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