[Federal Register Volume 68, Number 97 (Tuesday, May 20, 2003)]
[Notices]
[Pages 27536-27539]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-12500]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: 2003-P-018]


Request for Comments on the Study of the Changes Needed To 
Implement a Unity of Invention Standard in the United States

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice; request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO) has 
established a 21st Century Strategic Plan to transform the USPTO into a 
quality-focused, highly productive, responsive organization supporting 
a market-driven intellectual property system. As part of this plan, the 
USPTO will conduct a study of the changes needed to implement a Patent 
Cooperation Treaty (PCT) style Unity of Invention standard in the 
United States. Prior to starting a detailed study, the USPTO is seeking 
public comment on a number of issues to help guide the scope and 
content of a study on the adoption of a Unity of Invention standard in 
the United States.

Comment Deadline Date: To be ensured of consideration, written comments 
must be received on or before July 21, 2003. No public hearing will be 
held at this stage of the study.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: [email protected]. Comments may also be 
submitted by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, PO Box 1450, Alexandria, VA 22313-1450; or by 
facsimile to (703) 872-9411, marked to the attention of Robert Clarke. 
Although comments may be submitted by mail or facsimile, the USPTO 
prefers to receive comments via the Internet. If comments are submitted 
by mail, the USPTO would prefer that the comments be submitted on a DOS 
formatted 3\1/2\ inch disk accompanied by a paper copy.
    The comments will be available for public inspection at the Office 
of Patent Legal Administration, Office of the Deputy Commissioner for 
Patent Examination Policy, located at Room 3D65 of Crystal Plaza 3/4, 
2201 South Clark Place, Arlington, Virginia, 22202, and will be 
available through anonymous file transfer protocol (ftp) via the 
Internet (address: http://www.uspto.gov). Since comments will be made 
available for public inspection, information that is not desired to be 
made public, such as an address or phone number, should not be included 
in the comments.

FOR FURTHER INFORMATION CONTACT: Robert A. Clarke directly by phone at 
(703) 305-9177, by e-mail at [email protected], by facsimile to 
(703) 305-1013, marked to the attention of Robert A. Clarke, or by mail 
addressed to: Mail Stop Comments--Patents, Commissioner for Patents, PO 
Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: The Unity of Invention standard (in PCT 
applications) and United States restriction practice (in United States 
applications) are mechanisms by which the USPTO determines whether 
patent applicants are entitled to examination of all of the claims in 
an application by determining whether the claims are directed to a 
single invention, or to

[[Page 27537]]

multiple inventions that are capable of supporting separate patents.
    The Unity of Invention standard is a component of many foreign 
patent laws and is also used in international search and preliminary 
examination proceedings conducted pursuant to the PCT.
    United States restriction practice is based on 35 U.S.C. 121, which 
provides that: ``[i]f two or more independent and distinct inventions 
are claimed in one application, the Director may require the 
application to be restricted to one of the inventions.'' This allows 
examiners to limit applicants to one set of patentably indistinct 
inventions per application. The USPTO may ``restrict'' the application 
to one set of patentably indistinct inventions: (1) If the application 
includes multiple independent and patentably distinct sets of 
inventions, and (2) if there is an undue burden to examine more than 
one invention in the same application. Restriction practice was 
designed to balance the interest of granting an applicant reasonable 
breadth of protection in a single patent against the burden on the 
USPTO of examining multiple inventions in a single application.
    Current USPTO policy allows for restriction between related 
inventions as well as between independent inventions. However, if the 
USPTO adopts a Unity of Invention standard, restriction would, as a 
general rule, no longer be permitted between certain related inventions 
that currently may be restricted under United States restriction 
practice. Some examples of related inventions that are often filed 
together and typically can be restricted under current United States 
practice before a prior art search is conducted, but do not lack unity 
under the Unity of Invention standard, include: (1) A process, and the 
apparatus for carrying out the process; (2) a process for making a 
product, and the product made; (3) an apparatus, and the product made 
by the apparatus; (4) a product, and the process of using the product.
    A lack of Unity of Invention is different from restriction practice 
in some major aspects. Unity of Invention is practiced, with slight 
variations, in PCT applications and in applications examined by the 
European Patent Office (EPO) and the Japan Patent Office (JPO). The 
primary consideration for establishing Unity of Invention is that the 
claims are entitled to be examined in a single application if the 
claims are so linked together as to form a single general inventive 
concept, premised on the concept of a common feature (referred to as a 
``special technical feature'' in the context of PCT Rule 13) that can 
be present in multiple inventions within a single application. As long 
as the same or corresponding common feature is found in each claim and 
that common feature makes a contribution over the prior art, the claims 
comply with the requirement for Unity of Invention. If the inventions 
lack a common feature that makes a contribution over the prior art, 
then a holding of lack of Unity of Invention would be proper. The 
determination of whether an invention makes a contribution over the 
prior art can effectively be done only after a prior art search for the 
common feature has been performed.
    Adoption of any of the various styles of Unity of Invention 
practice will likely have significant impacts on current USPTO 
examination practices and organization. The degree of the impacts will 
depend upon the particulars of how the Unity of Invention standard is 
implemented. A complete study will need to consider, at a minimum, the 
impacts and changes to: quality, pendency, workload, revenue, fees, 
patent term adjustment, examination resources, organizational structure 
of the Patent Examining Corps, and the United States patent 
classification system.

Issues for Comment

    Issue 1: Unity of Invention as practiced in the EPO is interlinked 
to EPC-style claim drafting and EPO claim treatment practice, including 
certain limitations on claiming that are not present in current United 
States patent practice. For example, the EPO (under EPC rule 29(2)) 
usually allows only one independent claim per category of invention 
(category of invention is that of product, process or apparatus of 
use), and emphasizes the search and examination of independent claims. 
In contrast, the USPTO searches and examines every claim, independent 
and dependent, and every limitation of every claim. In addition, EPC-
style claim drafting is generally termed ``central claiming''. In 
central claiming, the inventive concept is essentially claimed in the 
independent claim. If the independent claim is found allowable, the EPO 
examination will not be unduly concerned with respect to the dependent 
claims, according to EPO Guidelines, C-III, 3.6.
    Should the USPTO study ways to adopt EPO claim treatment practice, 
including normally allowing only one independent claim per category of 
invention, when considering ways to adopt a Unity of Invention 
standard, and why?
    Should the USPTO emphasize the examination of independent claims 
and modifying the examination of dependent claims in the same fashion 
as the EPO?
    If so, would there be any reason to consider changes to the 
presumption of validity under 35 U.S.C. 282 of those dependent claims?
    Issue 2: In United States restriction practice, the applicant can 
file a subsequent application that is directed to an invention that was 
divided out of the parent application. These are called Divisional 
applications. Divisional applications are typically subsequently filed 
and are not normally examined concurrently with the parent application. 
Divisional applications retain the benefit of the filing date of the 
original application if the conditions set forth in 35 U.S.C. 120 are 
met. This allows an applicant to continue to pursue protection for the 
inventions subject to restriction that were in the original application 
without being affected by double patenting. All member states of the 
Paris Convention for the Protection of Industrial Property (1967) 
(including Japan and all EPC member states), as well as the EPO, also 
provide for the filing of Divisional applications. However, the PCT 
does not yet provide for the filing of Divisional international 
applications. Consequently, the PCT rules provide for applicant to pay 
for the search and examination of additional inventions that ``lack 
unity'' in a single international application. Adoption of a Unity of 
Invention standard could, in some instances, require examining more 
inventions during the examination of a single application than occurs 
presently, thereby possibly causing delay in the examination of other 
applications if examination resources are limited. This could increase 
the USPTO's average patent pendency time.
    If the USPTO adopts a Unity of Invention standard, should the USPTO 
provide applicants the option of a PCT-style Unity of Invention 
practice to pay for additional inventions that lack Unity of Invention 
in the same application?
    If so, should the USPTO consider any changes to patent term 
adjustment under 35 U.S.C. 154(b) for applications which have more 
inventions examined in a single application under a Unity of Invention 
standard than are permitted under current practice?
    In view of the fact that examining multiple inventions in a single 
application could cause examination delay in other applications, what 
other revisions to patent term adjustment provisions under 35 U.S.C. 
154(b) should be considered by the USPTO, or

[[Page 27538]]

should the USPTO also consider revising the order that cases are taken 
up for examination?
    Issue 3: Under the PCT, examination proceeds on the basis of the 
first claimed invention if applicant does not pay for additional 
inventions that lack unity.
    Should the USPTO adopt, for national applications, the practice 
currently used under the PCT of examining the first claimed invention 
where there is a holding of lack of Unity of Invention?
    Optionally, where Unity of Invention is lacking: (1) Should the 
USPTO examine the first claimed product, or the first claimed invention 
if there are no product claims; or (2) should applicant be given the 
opportunity to elect an invention to be examined?
    Issue 4: A determination of lack of Unity of Invention is 
predicated on assessing whether a common feature (referred to as a 
``special technical feature'' in the context of PCT Rule 13) defines a 
contribution over the prior art. Certain PCT member states assess this 
requirement only with respect to patentable advances over prior art. 
However, issues of lack of support, enablement, clarity, or 
conciseness, generally resulting from excessive breadth of claims or 
excessive numbers of claims, may occur that render examination unduly 
burdensome. In such circumstances, some International Authorities will 
make a ``partial search'' declaration to limit the extent of search and 
examination. The USPTO does not follow this practice. On the other 
hand, it may be viewed that if the common feature or ``special 
technical feature'' is not adequately supported by the disclosure or 
lacks utility (``industrial applicability'' in the PCT context), the 
special technical feature does not make a contribution over the prior 
art.
    When adopting the Unity of Invention standard, should the USPTO 
follow the practice of performing only a ``partial search'' if the 
examination of the entire scope of the claims is unduly burdensome due 
to non-prior art issues?
    Alternatively, should the USPTO assess adequacy of the disclosure 
and industrial applicability in addition to the prior art when 
determining whether the claims' common feature makes a contribution 
over the prior art?
    Issue 5: The USPTO's 21st Century Strategic Plan is predicated on a 
certain level of revenue to provide the resources needed to meet 
quality and timeliness goals. The Plan currently does not account for 
any additional resource requirements, and any corresponding revenue 
shortfalls, that may result from adopting a Unity of Invention 
standard. Statutory fees under 35 U.S.C. 41(a) and (b), in the 
aggregate, are set to cover USPTO operating costs. If the average cost 
of processing patent applications goes up, the USPTO will need to 
increase fees. Assuming that there will be extra costs of examination 
under Unity of Invention, possible increases would be: (1) All filing 
fees; (2) all filing fees and an additional fee for examination of 
claims that lack Unity of Invention with an elected invention; (3) 
increased issue and/or maintenance fees of all applications; (4) 
increased issue and/or maintenance fees for applications paying the 
additional invention fee; or (5) a combination of two or more of (1) 
through (4) above.
    Which of the above approaches should the USPTO propose in regard to 
any fee increases?
    Issue 6: Adopting a Unity of Invention standard would impact the 
number of inventions that would be examined in a single application, 
and require examining multiple inventions that cross multiple 
disciplines in a single application. Due to the current level of 
technical specialization in the Patent Examination Corps, the USPTO 
will have to consider the impact any change would have on the ability 
of the USPTO to maintain high quality examination.
    How should work be assigned to ensure that examination quality 
would not suffer if examiners have to examine multiple inventions from 
different disciplines in a single application?
    Should the USPTO consider: (1) Using team examination, similar to 
the EPO where applications are examined using three-person teams called 
``examination divisions'' (2) extending the use of patentability report 
procedures provided for in section 705 of the Manual of Patent 
Examining Procedure (8th ed. 2001) (Rev. 1, Feb. 2003); (3) maintaining 
the current process of a single examiner on an application; or (4) 
using some other option of how work is performed by examiners?
    Issue 7: One way of adopting aspects of Unity of Invention without 
making any statutory changes would be for the USPTO to use its 
authority under the continued examination provisions of 35 U.S.C. 
132(b) (authorizes request for continued examination or RCE practice) 
to permit applicants to pay an RCE fee and submit or rejoin claims to 
additional inventions after prosecution has been closed on a first 
invention, so long as the claims presented with the RCE fee either 
depend from or otherwise include the features of the allowed claims 
which make a contribution over the prior art. In this option, most 
applications will continue to be examined under the USPTO's current 
restriction practice. Under any new provisions to implement this 
option, when a claim is determined to be allowable, the applicant would 
be entitled to request continued examination under the Unity of 
Invention standard. The required submission would be additional claims 
that either depend from or otherwise include the features of the 
earlier-examined claims that are in condition for allowance (if such 
additional claims were not previously pending in the application).
    Should the USPTO consider this option?
    Should this option be available only to applicants whose 
applications are published?
    If so, how should the new RCE fee be set relative to the current 
fee structure?
    Issue 8: As a second example of adopting aspects of Unity of 
Invention without making any statutory changes, the USPTO could use its 
authority under continued examination to permit requests that the USPTO 
continue examination of claims which were withdrawn from consideration. 
This option would require applicants to make a decision to request 
continued examination rather than file a divisional application, to pay 
a fee for the treatment of one additional invention, and to present 
claims drawn only to that additional invention. This option would be 
available in addition to the continuing option of filing a divisional 
application.
    Should the USPTO consider this option?
    If so, how should the loss in issue and maintenance fee collections 
be offset relative to the current structure?
    Issue 9: In view of the previous questions and the range of issues 
and options, should the USPTO consider: (1) Seeking a change to 35 
U.S.C. 121 to adopt a Unity of Invention standard (and if so, what 
would such statutory change be, including whether such a statute would 
provide for applicants to pay for additional inventions that lack Unity 
of Invention to be examined in the same application); (2) maintaining 
the current restriction practice in the USPTO; and/or (3) modifying the 
USPTO rules and procedures to adopt aspects of Unity of Invention 
practice without making any statutory changes (if so, in what manner 
should rule changes be made)?
    Issue 10: Do you have other solutions to offer which are not 
addressed in this notice?


[[Page 27539]]


    Dated: May 9, 2003.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and, Director of 
the United States Patent and Trademark Office.
[FR Doc. 03-12500 Filed 5-19-03; 8:45 am]
BILLING CODE 3510-16-P