Today we learned about the unity of invention standard for international applications. However, we won’t be seeing any PCT (Patent Cooperation Treaty) applications (or so we’ve been told) until after we get out of the academy, so I’m afraid this information is going to rot away by the time it is actually useful.
Let’s step back for a moment. What is an international application? Well, there are no international patents, but there are international applications. The idea is that an individual or company can create an application that meets the formalities for all countries that participate in the Patent Cooperation Treaty; they don’t have to worry about the US having a different standard margin, for example, than Japan. Applicant picks a search authority who does a search and issues an opinion about the potential patentability of the application based on the PCT standards.
Applicant has 30 months total to move from the international stage to the national stage; that is, applicant picks which countries to pursue actual patents in. So we generally look at PCTs in two situations: when we do the PCT “examination” (it isn’t a true examination) and when we look at the national stage application that has been filed in the US from the PCT.
By way of example: I create an in international application for widget X. I choose the US as the search authority, and an examiner does his thing with the application. He searches, he writes his opinion concerning the patentability of the invention, etc. I take a look at the report, and I now decide where I want to spend the money to get patent protection. So I might choose France, the US and Japan. Now I have moved to the national stage with these three applications. The examiners in each of the respective countries consult the preliminary findings of the first examiner, and they go through the prosecution of the applications.
But things get even more complicated, because what we do to restrict inventions in the US is different from the unity standard applied to international applications. To give a quick (and very simplified) refresher of restrictions: an examiner can restrict, or say that an applicant is trying to claim more than one invention, if there are multiple inventions in an application and trying to deal with all of them would represent an undue burden. So if your invention is a bunch of known things put together, that’s unlikely to happen. But if your invention is actually a combination of a bunch of unrelated sub inventions – like my new engine with new lubricant example, then the examiner is well-served to restrict those so that the inventor or assignee will end up with two or more patents, rather than one.
The unity of invention standard is considerably different, and I’m not going to go to great lengths to get it “right.” The idea is that if all the claims share a specific technical feature (something not known in the prior art), and the claims as a whole are directed to a unified invention, the claims have unity. So for the unity standard, my engine and lubricant claims might actually be combinable in a single application.
One can imagine that this makes things difficult for examiners both in terms of doing the job for these cases and in terms of understanding the new standards to apply.
It is all interesting nonetheless.