Judgment of “Unity of Invention” and the Revision of the Examination Guidelines Thereof

unity of inventionBased on the principle that there is only one patent right for one invention, a patent application for invention shall relate to one invention only.

However, considering the convenience of the applicant, the public and the patent agency in the classification, retrieval and examination of the patent application, for two or more inventions that originally should have been applied separately, the Patent Act exceptionally specifies that two or more inventions “belonging to a single general inventive concept” can be filed in one application, which is the concept of “unity of invention”.

Two or more inventions “belonging to a single general inventive concept” means that two or more inventions that are technically related. “Technically related” means that the invention in the claim contains one or more of the same or corresponding special technical features. “Special technical features” refers to the technical features of the claimed invention as a whole that specifically contribute to the prior art, that is, the technical features that are novel and inventive compared to the prior art.

In order to improve and unify the examination practice of “unity of invention”, the examination guidelines for “unity of invention” has been revised and implemented on January 1, 2019. The amendments focus on:

(1) Judgment of the unity of invention:

The step of judging the unity of invention is adjusted. First, judge whether the inventions contained in the independent claims obviously lack unity. If yes, the application lacks the unity of invention. If not, search for the prior art and determine whether the invention described in claim 1 has special technical feature in view of the prior art. If there is no special technical feature, it means the inventions of the independent claims surely do not contain the same or corresponding special technical features, and thus the application lacks the unity of invention.

If the invention of claim 1 has a special technical feature, further determine whether the inventions of the other independent claims have the same special technical feature or a special technical feature corresponding to that special technical feature of claim 1. If yes, the invention of the other independent claims and the invention of claim 1 have the same or corresponding special technical features, and the application has the unity of invention. If not, that is, the inventions of any of the other independent claims lacks the technical features identical or corresponding to the special technical features of claim 1, and the application lacks the unity of invention.

(2) Determining the object of examination:

It is explicitly regulated that when the application obviously lacks the unity of invention, at least one group of claims consisting of an independent claim and its dependent claims shall be included in the object of examination. In principle, the independent claim shall be claim 1. If the prior art can be used to judge that other groups of claims are not novel or inventive, it shall also be notified together.

The steps for judging the unity of invention are illustrated as follows.

unity of invention

Delivered by: Sandy WANG (Ms.) / Senior Partner
JAW-HWA INTERNATIONAL PATENT &
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