Asia Patent Alliance

Regarding Unity of the Invention (Part 2)

 

In the last One Point Lesson we introduced unity of the invention using the claims below as an illustration. In cases where Claim 1 lacks a Special Technical Feature (STF) but Claim 2 possesses it, the cited inventions that include all the matters specifying the invention in Claim 2 will be eligible for examination. For example, from Claim 4, claims such as Claim 4-2 cite the invention in Claim 2. In addition, out of the 4 claims, although the claims that cite Claim 1 (such as Claim 4-1) do not include Claim 2, they will be examined in reality through examination of Claim 4-2. In such cases, both Claim 3 and claims that cite Claim 3 will not be examined, as they do not fulfill the requirement of unity.

Patent Claims

1. Film manufacturing equipment equipped with A, B, and/or C <- Public knowledge (lacks novelty)
2. Film manufacturing equipment according to claim 1 wherein C is cylindrical
3. Film manufacturing equipment according to claim 1 wherein C is cladded with heat resistant resin.
4. Film manufacturing equipment according to any one of claim 1 to claim 3 further equipped with D
5. Film manufacturing equipment according to any one of claim 1 to claim 4 further equipped with D

Next, we will explain the possibility of amendments. Amendments that make Claim 3 depend on Claim 2 (which has STF) are possible. Again, amendments creating dependency on claims that have already been substantively examined are also possible and eligible for examination (such as Claim 4-1-3). However, because Claim 3 is not eligible for examination, a divisional application will be required.

Therefore, the points to be aware of in terms of unity of an invention are that previous research is vital, that claims should be defined serially, and that the dependent claims should be listed in the order that rights are desired.