Bruce KisliukGroup Director, Technology Center 1600

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Unity of Invention StudyKey Milestones

May 2003: Published Federal Register Notice on request for comments on Unity issues.

November 2003: Publish paper (Green Paper) on options/proposals and business impact analysis.

January 2004: Hold public hearings on Unity options outlined in the Green Paper.

April 2004: Publish final report (White Paper) on implementation of Unity of Invention Standard.

May 2004: Draft necessary legislation.

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Unity of Invention StudySteps in the Process

1. Published Federal Register Notice on request for comments on Unity issues. Public comment period 60 days, written comment only. Comment period ended July 21, 2003.

2. Following public comments, USPTO starts analysis of implementation options taking into account public comments and corresponding business-impact on the USPTO (July- Nov. 2003).

3. Publish a notice setting out the options/proposals to implement Unity (Green paper). Public comment period will include public hearings (Nov. 2003-Jan. 2004)

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Unity of Invention StudySteps in the Process (continued)

4. After Public Hearings and comment period ends, publish a final report on implementation of Unity (White Paper) (April 2004). This concludes the study.

5. Draft any necessary legislation to implement Unity (May 2004).

6. Vetting legislation in preparation for introduction (May-Sept. 2004).

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Unity of Invention StudyIssues for Comment

Issue 1: Should the USPTO study ways to adopt EPO claim treatment practice, including normally allowing only one independent claim per category of invention, when considering ways to adopt a Unity of Invention standard?

Issue 2: If the USPTO adopts a Unity of Invention standard, should the USPTO provide applicants the option of a PCT-style Unity of Invention practice to pay for examination of additional inventions that lack Unity of Invention in the same application?

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Unity of Invention StudyIssues for Comment (continued)

Issue 3: Should the USPTO adopt, for national applications, the practice used currently under the PCT of examining the first claimed invention where there is a holding of lack of Unity of Invention?

Issue 4: When adopting the Unity of Invention standard, should the USPTO follow the EPO practice of performing only a “partial search” if the examination of the entire scope of the claims is unduly burdensome due to non-prior art issues?

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Unity of Invention StudyIssues for Comment (continued)

Issue 5: Assuming that there will be extra costs of examination under Unity of Invention, which fees (e.g., filing, issue, maintenance) should be increased to recover the extra costs?

Issue 6: How should work be assigned to ensure that examination quality would not suffer if examiners have to examine multiple inventions from different disciplines in a single application?

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Unity of Invention StudyIssues for Comment (continued)

Issue 7: Should the USPTO consider using its request for continued examination or RCE authority under 35 U.S.C. 132(b) to permit applicants after prosecution has been closed on a first invention to pay an RCE fee and submit or rejoin claims to additional inventions that either depend from or otherwise include all of the limitations of the allowed claims?

Issue 8: Should the USPTO consider using its request for continued examination or RCE authority under 35 U.S.C. 132(b) to permit requests that the USPTO continue examination of claims which were withdrawn for consideration (rather than file a divisional application)?

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Unity of Invention StudyIssues for Comment (continued)

Issue 9: Should the USPTO consider: (1) seeking a change to 35 U.S.C. 121 to adopt a Unity

of Invention standard; (2) maintaining the current restriction practice in the

USPTO; (3) modifying to the USPTO rules and procedures to

adopt aspects of Unity of Invention practice without making any statutory changes

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Unity of Invention StudyIssues for Comment (continued)

Issue 10: Are there other solutions which have not been addressed in the request for comments?