The WIPO and the EPO determine the unity of claims in a patent based on the presence of a common "special technical feature", which is usually equated with inventive step.
[5][7] If the applicant disagrees with the ISA's finding of lack of unity of invention, the additional fees may be paid under protest.
"[10] Although U.S. patent law does not use the term "unity of invention", the relevant legislative act (Title 35 of the US Code: 35 U.S.C.
The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.
[16] There are two criteria for a proper restriction requirement in case of patentably distinct inventions: (A) The inventions must be independent (see MPEP § 802.01, § 806.06, § 808.01) or distinct as claimed (see MPEP § 806.05 - § 806.05(j)); and (B) There would be a serious search and/or examination burden on the examiner if restriction is not required (see MPEP § 803.02, § 808, and § 808.02) The USPTO provides several examples that explained in greater details its current restriction practice based on one-way and two-way distinctions.
This difference results in a multi-fold larger number of restriction requirements issued by the USPTO compared to the EPO, Intellectual Property Office (United Kingdom), German Patent and Trade Mark Office, National Institute of Industrial Property (France), JPO and CNIPA, that originate from the same Paris Convention or Patent Cooperation Treaty (PCT) priority application.
[19] (2) There is no judicial review of the restriction requirement in the US (a petition to the USPTO Director is the only available remedy, which are never granted).
Many American patent practitioners believe, that the broad discretion given to the USPTO and the lack of judicial review on the issues of unity of invention, allow patent examiners to cynically "issue knee-jerk restriction requirements due to incentives at the USPTO to increase revenue or for examiners to perform less work for the same credit.
In 2003 the Biotechnology Industry Organization urged the USPTO to change its restriction practice because some applicants were forced to spend $500,000 "to fully protect a single invention" due to numerous divisionals.
A serious drawback of this approach is that "at the time of restriction (i.e. before the obviousness analysis), whether the inventions are patentably distinct is not known".
(2) the inventions as claimed are not connected in at least one of design, operation, or effect (e.g., can be made by, or used in, a materially different process) - i.e. alternative uses/methods.
[26] An example of such restriction requirement is: the inventions as claimed are not connected in at least one of design, operation, or effect (e.g., can be made by, or used in, a materially different process) - i.e. alternative uses/methods.
An example of such restriction requirement is: The examiner noted that Inventions I and II are related as a method and apparatus for its practice, respectively.
Nevertheless, the MPEP provides an exception similar to the EPO/WIPO approach: "If there is an express admission that the claimed inventions would have been obvious over each other within the meaning of 35 U.S.C.
[30] (5) notably, the USPTO allows more generous grouping of species in Markush claim: i.e. "(a) the members of the Markush group share a "single structural similarity," and (b) the members share a common use,"[28] than it does for different types of claims (i.e. process, apparatus and product) in the same patent.
The analysis used to determine whether the Office may require restriction differs in national stage applications submitted under 35 U.S.C.
[38] Thus, the PCT route is recommended for applicants who are concerned with the cost of numerous divisionals and with potential double patenting accusations in the future.