Newsletter
New Rules for Assessment of Unity of Invention from January 1, 2019
The purpose of regulating the assessment of unity of invention is to ensure efficient use of examination resources. To improve the consistency in the assessment of unity of invention, the Taiwan Intellectual Property Office (the "TIPO") has amended the examination guidelines related to unity of invention. The amendments, which came into force on January 1, 2019, include the following:
1. Definition of "Special Technical Feature"
The term "special technical feature" means "a technical feature that defines a contribution which the claimed invention, considered as a whole, makes over the prior art" (i.e. a technical feature that is novel and inventive). In principle, a prior art search should be conducted first, and then a comparison between the claimed invention and the prior art should be made to determine whether the claimed invention has a special technical feature(s).
2. Steps for Determining Unity of Invention
The TIPO has deleted the step of pre-selecting the special technical feature in an independent claim. The assessment of unity of invention now includes the following steps:
(1) Determining the existence of unity of invention in the independent claims
If the independent claims have no common or corresponding technical features, or if the common or corresponding technical features of the independent claims are determined to be prior art or known techniques based on the prior art disclosed in the specification, claims and drawings, then it is determined that the independent claims have no common or corresponding special technical features and thus the patent application does not comply with the requirement of unity of invention.
(2) Conducting a prior art search
If it is not obvious that the independent claims do not comply with the requirement of unity of invention, a prior art search should be conducted. In principle, the search should be conducted starting from claim 1. If claim 1 is determined to have no special technical features, then the independent claims have no common or corresponding special technical features and thus the patent application does not comply with the requirement of unity of invention.
If claim 1 is determined to have a special technical feature(s), then the other independent claims should be examined to determine whether they have a technical feature(s) common or corresponding to the special technical feature(s).
3. Further Determining Unity of Invention If There Is No Obvious Lack of Unity of Invention
As mentioned above, the prior art search should, in principle, be conducted starting from claim 1. However, the search may start from another independent claim if any one of the following situations exists:
(1) Claim 1 is not clearly written.
(2) The invention of claim 1 does not meet the statutory definition of "invention."
(3) Claim 1 is not directed to statutory subject matter.
(4) The invention of claim 1 lacks industrial applicability.
(5) Claim 1 obviously is not the most representative claim among all the independent claims.
4. Examination Procedure
For a patent application, if (i) an office action indicating the lack of unity of invention has been issued and (ii) the arguments submitted by the applicant are not convincing or the applicant does not respond within the given time period, a rejection decision may be issued. However, before the issuance of a rejection decision, a Final Notice may be issued if the Final Notice would not result in examination delay.