Practice Notice on Unity of Invention

Practice Notice on Unity of Invention - March 26, 2010
(PDF - 35 KB - 2 pages)

Unity of Invention: Commissioner directing an applicant to limit an application pursuant to 36(2.1) of the Patent Act.

March 26, 2010

NOTE: This practice notice is intended to provide guidance on current Canadian Intellectual Property Office (CIPO) practice and interpretation of relevant legislation and should not be quoted as, or considered to be, a legal authority. In the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. It is the responsibility of the applicant/patentee to decide how to proceed with respect to a particular application or other matter.

On March 24, 2009, following a period of public consultation, the Canadian Intellectual Property Office (CIPO) released a practice notice to provide guidance in respect of Patent Office practice related to the unity of invention requirement under section 36 of the Patent Act. The present is intended to supplement the content of that notice, as certain aspects of examination practice appear to require further clarification.

Subsection 36(1) of the Patent Act provides that

A patent shall be granted for one invention only but in an action or other proceeding a patent shall not be deemed to be invalid by reason only that it has been granted for more than one invention.

The Office takes the position that the intent of subsection 36(1) is that where an application describes and claims more than one invention, the claims require amendment so as to define one invention only. A lack of unity of invention among the claims is identified as non-compliance with subsection 36(1) of the Patent Act and a requisition to correct this defect is sent to the applicant. Office practice permits an examiner to issue a requisition addressing only this defect.

Subsection 36(2) of the Patent Act provides that

Where an application (the “original application”) describes more than one invention, the applicant may limit the claims to one invention only, and any other invention disclosed may be made the subject of a divisional application, if the divisional application is filed before the issue of a patent on the original application.

Where the applicant responds to a requisition identifying lack of unity of invention by amending the claims in such a manner as to overcome the defect, this determines for that application the one invention only referred to in subsection 36(2) of the Patent Act. Thereafter, any other invention disclosed may be made the subject of a divisional application. The Office takes the position that, in accordance with subsection 36(2) ofthe Patent Act, the claims of the application under examination may no longer be directed to the matter of any other invention disclosed.

In effect, the applicant has the right to elect, one time only, the identity of the one invention only that will be the subject of examination in a given application.

An examiner may decide, when drafting a report on an application that does not meet the unity of invention requirement, to examine the claims relating to one of the inventions identified in the claims. An examiner may do so in order to expedite prosecution, and typically will only do so if it appears clear, for example in view of the claims of patents issued in other jurisdictions, which invention the applicant will elect for prosecution. This selection by the examiner of an invention for prosecution does not supplant the applicant's right to elect, one time only, the one invention only of the application under examination.

In the event of an impasse between the examiner and the applicant as to whether the claims are directed to more than one invention, the examiner will refer the application to the Commissioner of Patents for a determination on the issue.

This referral will not take the form of a Final Action, since:

(a) should the applicant limit the claims to one invention only in response to a Final Action, subsection 30(5) of the Patent Rules would require the examiner to withdraw the rejection; this should generally result in allowance of the application, but in the case of a lack of unity of invention the claims would not necessarily have been fully examined; and

(b) should the Commissioner conclude after a review in accordance with subsection
30(6) of the Patent Rules that the application does not comply with subsection 36(1) of the Patent Act, no further amendment of the application would be possible in view of section 31 of the Patent Rules.

Where the Commissioner reviews the application and has reason to believe that theapplication complies with section 36 of the Patent Act, the examiner will resumeprosecution and consider all the claims on file.

Where the Commissioner reviews the application and has reason to believe that the application does not comply with section 36 of the Patent Act, a letter will be sent to the applicant directing that the claims be limited to one invention only. This direction will be made under authority of subsection 36(2.1) of the Patent Act, and is not a requisition under section 30 of the Patent Rules.

Where the applicant's amendments in response to the letter satisfy the Commissioner that the application complies with section 36 of the Patent Act, examination of the application will continue. If the applicant's amendments in response to the letter fail to satisfy the Commissioner that the application complies with section 36 of the Patent Act, the application may be refused under section 40 of the Patent Act.