[Pct] Weird unity of invention issue

[David Boundy]

Thank you

On Sun, Feb 4, 2024 at 10:58 AM Dan Feigelson <djf at iliplaw.com> wrote:

> 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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