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Unity of Invention

Search and examination of additional inventions

6.78 Rule 45(1) states that:

If during the preparation of a report under Section 29(1)(a) or (b)3 it appears that an application relates to 2 or more inventions, but they are not so linked as to form a single inventive concept, the search may be restricted to one in relation to the first invention specified in the claims of the application, and the Registrar shall notify the applicant of that fact. Here the first invention means the invention first mentioned in the claims.

6.79 The applicant may pay a fee for a search of the second or subsequent invention(s) to be conducted (Rule 45(2)). This must be done within 2 months of the date of the search report.

6.80 In addition, during the preparation of a search report under Section 29(1)(a) where it is considered there is a lack of unity, there is possibility for a search to be conducted of second (or subsequent) invention(s) in the case that there is little additional effort required to undertake such a search.

6.81 In such cases, a lack of unity may be raised, but the applicant is informed that the additional invention(s) have been searched as a matter of courtesy. Additional search can be costly in terms of Examiners’ effort and costs associated with database and supply of citations. As such, additional search should be limited to where there is little  additional cost and effort involved. The approach under the PCT should be followed in determining whether little additional effort is required. For example, if it is a relatively straightforward claim set and the two inventions can be readily searched in a single search statement, then there may little additional work to cover all of the inventions.

6.82 During the preparation of a search and examination report under Section 29(1)(b) where it is considered there is a lack of unity, in exceptional circumstances (e.g. when the inventions are conceptually very close), it is possible to search and examine second (or subsequent) invention(s) when there is little additional effort required to undertake both search and examination.

6.83 In such cases, an objection to lack of unity may be raised, but the applicant is informed that the additional invention(s) have been searched and examined as a matter of courtesy. In considering the amount of work involved, the Examiner should take into account the time taken to conduct the examination as well as that needed to perform the search, since even when the analysis involved with regards to the search is negligible, the opposite may be the case for the examination.

6.84 Applicants may address a unity objection as follows:

(1) Limit the claims to the first invention as specified in the Examiner’s report by deleting claims to the second or subsequent invention(s), which can be further pursued by requesting for additional search or filing divisional application(s);

(2) Amend the claims to include a same special technical feature that joins the claims in a single general inventive concept;

(3) Provide arguments as to why the claims are unified in compliance with Section 25(5)(d).

6.85 In the event that the applicant files a divisional application, the applicant may request an examination of that divisional application by relying on any search or supplementary search report established for the parent application (if the search for the parent application covers the invention claimed in the divisional application) or alternatively relying on a search report established in another office for that invention (Section 29(1)(c) and Rule 45(3)4 ). Such search or supplementary search reports relied on may include those where the examining office has taken an objection of lack of unity but has undertaken a search of the additional inventions (for example, where additional search fees were paid during the International phase of the application).

6.86 Pertaining to point (2) above, notably, if as a result of the claim amendments, there is a shift of the special technical feature of the invention(s) from that of the first invention searched in the earlier search report, the Examiner is not obliged to carry out an additional search for the unsearched subject matter. This is because even if the claims have been amended such that they are joined by a single inventive concept by the introduction of a common special technical feature, there would have been no reason for the Examiner to search the specific subject matter of that inventive concept during the initial search. In other words, if the applicant’s amendment results in an inventive concept that was not reasonably apparent at the time of the initial search, then additional search and examination would not be carried out because it would result in the search and examination of two different inventive concepts.

6.87 Pertaining to point (3) above, in particular for a search only case or a search and examination case, if a lack of unity objection has been raised, and subsequently the applicant provides arguments showing that the lack of unity objection is not justified, the Examiner shall carry out an additional search for the subject matter that the Examiner initially did not search based on the incorrect lack of unity objection.

6.88 An outstanding lack of unity objection needs to be resolved before the grant of a patent. Pursuant to such a grant, there is no ground for revocation in relation to the patent being for more than one invention.

6.88 An outstanding lack of unity objection needs to be resolved before the grant of a patent. Pursuant to such a grant, there is no ground for revocation in relation to the patent being for more than one invention.


3  The corresponding provisions in the Patents Act in effect immediately before 14/02/2014 are Section 29(2)(a) and (b), respectively.
According to Section 29(1)(c) and Rule 45(3), reliance of search is allowed on (a) any search report or supplementary search report established in the parent application; or (b) where the parent application is an international application for a patent (Singapore) that has entered the national phase in Singapore under Section 86(3), any international search report or international supplementary search report established during the international phase of the parent application; or (c) a search in one corresponding application, corresponding international application or related national phase application.