[Pct] Weird unity of invention issue

Sun Feb 4 14:19:34 EST 2024

Just an observation of something looking to be a trend by the EPO…

I had 2 cases within the past year where the EPO did not ‘initially’ assert lack of unity of invention… The EPO found all the claims novel and inventive, and THEN sent out a Communication saying “WHOOPS!  While the claims are allowable over the art, they lack unity of invention and therefore you can only pursue one of the following groups of claims.”

The claims relate to different biological sequences falling under a generic genus claim or a Markush group, e.g., CDR sets for antibodies that bind the same target.

Seems to me that the EPO has decided to become more stringent on unity of invention and even review applications after the fact to try to assert lack unity of invention as an intentional money grab, i.e., increase revenue via divisionals… which makes sense given the economy and likely decrease in patent filings… which also results in decreased annuity fee revenue.

Up until recently, I never had any such unity of invention issues where there was a small number of different members/sequences.  For example, it was possible to get 6 antibodies or somewhat similar proteins that are functionally related granted in 1 application.  Now, coverage will require 6 separate applications, which is cost-prohibitive.

FWIW.

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From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of David Boundy via Pct
Sent: Sunday, February 4, 2024 1:59 PM
To: for users of the Patent Cooperation Treaty <pct at oppedahl-lists.com>; Daniel J. Feigelson <djf at iliplaw.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Pct] Weird unity of invention issue

Daniel Feigelson identified an error in my statement of the case (thank you).  That, plus other research, corrects the question:

Corrected question.
(a) Years ago, I recall that there was a provision that said "If international phase treats the invention as a whole, national phase is stuck with it, and can't divide."   I can't find that--was that rescinded, or is my memory faulty?
(b) If that provision exists, on the following facts, how do I get the benefit of that law?
(c) If no such provision exists (today), then I don't think anything else in this question really matters (and Daniel, I appreciate the offer to phone ISA/IL, but I don't think it matters, so I'll save the favor for another day).
(d) But if any of you know EP or JP "custom" on this set of facts, I'd like to know.

My puzzlement comes from a clash between the treaty text itself and the regs.  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."  But then the regs have a clash-- a clash in the applicant's favor, but a clash:

Rule 68.1 No Invitation to Restrict or Pay
Where the International Preliminary Examining Authority finds that the
requirement of unity of invention is not complied with and chooses not to invite
the applicant to restrict the claims or to pay additional fees, it shall proceed with
the international preliminary examination, subject to Article 34(4)(b) and
Rule 66.1(e), in respect of the entire international application, but shall indicate,
in any written opinion and in the international preliminary examination report,
that it considers that the requirement of unity of invention is not fulfilled and it
shall specify the reasons therefor.

https://www.wipo.int/export/sites/www/pct/en/docs/texts/pct-regs.pdf   I can find several PCT Articles, Regulations, etc about what happens during international phase if the ISA searches under 68.1, but not how this affects national phase.

Corrected facts.   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" and explains why
      -- The ISR checks Box III item 2, "As all searchable claims could be searched without effort justifying additional fees, this Authority did not invite payment of additional fees."
      -- 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

Now what does that mean for national phase -- what shoudl I do in EP and JP?

Thanks

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