10.30.2018
Upcoming Revisions of Determination of Unity of Invention in Guidelines for Patent Examination
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BY STELLAR J. H. LIN
According to the provision of Article 33, Paragraph 2 of the Patent Act in Taiwan, two or more inventions so linked as to form a single general inventive concept may be filed in one application. That is, said two or more inventions meet the unity requirements.
Draft amendments to the unity determination in the Guidelines for Patent Examination were proposed by the Taiwan Intellectual Property Office (TIPO) on October 25, 2018. The key points of the amendments to the Guidelines for Patent Examination are summarized below:
I. Steps for determining the unity of an invention:
Step 1: determining whether or not the lack of unity among inventions defined in all independent claims is obviously present, wherein said determination depends on whether or not there are identical or corresponding technical features among the inventions.
Step 2a: if the condition in step 1 is satisfied, the patent application does not comply with the unity requirements of the Patent Act.
Step 2b: if the condition in step 1 is not satisfied, an examiner should search the prior art to determine whether or not the invention has a special technical feature and then determine whether or not inventions of other independent claims all have this special technical feature or a corresponding technical feature thereof.
Step 3a: if the condition in step 2b is satisfied (i.e., all independent claims have a special technical feature or a corresponding technical feature thereof), the patent application complies with the unity requirements of the Patent Act.
Step 3b: if the condition in step 2b is not satisfied, the patent application will be deemed to lack unity.
In principle, the step of determining a special technical feature is directed to claim 1 of an invention application. That is, the examination of the claims usually begins from claim 1.
Moreover, the “special technical feature” means a feature which defines a contribution that the claimed invention considered as a whole makes over the prior art and thus has novelty and inventiveness. In general, the presence of such a special technical feature shall be confirmed after searching the prior art and comparing the prior art with the invention application.
II. When an examiner determines whether or not the requirement of unity of invention is satisfied in respect of a group of inventions claimed in a patent application, at least one independent claim and its dependent claims shall be examined.
According to the provision of Article 33, Paragraph 2 of the Patent Act in Taiwan, two or more inventions so linked as to form a single general inventive concept may be filed in one application. That is, said two or more inventions meet the unity requirements.
Draft amendments to the unity determination in the Guidelines for Patent Examination were proposed by the Taiwan Intellectual Property Office (TIPO) on October 25, 2018. The key points of the amendments to the Guidelines for Patent Examination are summarized below:
I. Steps for determining the unity of an invention:
Step 1: determining whether or not the lack of unity among inventions defined in all independent claims is obviously present, wherein said determination depends on whether or not there are identical or corresponding technical features among the inventions.
Step 2a: if the condition in step 1 is satisfied, the patent application does not comply with the unity requirements of the Patent Act.
Step 2b: if the condition in step 1 is not satisfied, an examiner should search the prior art to determine whether or not the invention has a special technical feature and then determine whether or not inventions of other independent claims all have this special technical feature or a corresponding technical feature thereof.
Step 3a: if the condition in step 2b is satisfied (i.e., all independent claims have a special technical feature or a corresponding technical feature thereof), the patent application complies with the unity requirements of the Patent Act.
Step 3b: if the condition in step 2b is not satisfied, the patent application will be deemed to lack unity.
In principle, the step of determining a special technical feature is directed to claim 1 of an invention application. That is, the examination of the claims usually begins from claim 1.
Moreover, the “special technical feature” means a feature which defines a contribution that the claimed invention considered as a whole makes over the prior art and thus has novelty and inventiveness. In general, the presence of such a special technical feature shall be confirmed after searching the prior art and comparing the prior art with the invention application.
II. When an examiner determines whether or not the requirement of unity of invention is satisfied in respect of a group of inventions claimed in a patent application, at least one independent claim and its dependent claims shall be examined.
