Bruce Kisliuk

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• Bruce Kisliuk
• Group Director, Technology Center 1600

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Unity of Invention Study

• Key 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 Study

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

• Steps in the Process (continued)
• After Public Hearings and comment period ends,
  publish a final report on implementation of Unity
  (White Paper) (April 2004). This concludes the
  study.
• Draft any necessary legislation to implement
  Unity (May 2004).
• Vetting legislation in preparation for
  introduction (May-Sept. 2004).

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Unity of Invention Study

• Issues 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 Study

• Issues 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 Study

• Issues 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 Study

• Issues 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 Study

• Issues for Comment (continued)
• Issue 9 Should the USPTO consider
• seeking a change to 35 U.S.C. 121 to adopt a
  Unity of Invention standard
• maintaining the current restriction practice in
  the USPTO
• 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 Study

• Issues for Comment (continued)
• Issue 10 Are there other solutions which have
  not been addressed in the request for comments?