MPEP § 1875 — MPEP § 1875
Current through: 2022-07-01

1875-Unity of Invention Before the International Preliminary Examining Authority 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1800 

 Section 1875 
 

 
 
 
 
 
 1875 Unity of Invention Before the International Preliminary
 Examining Authority [R-07.2015]
 

 
 PCT Article 34 

 Procedure before the International
 Preliminary Examining Authority 

 *****

 
 (3) 
 
 (a) If the International Preliminary Examining Authority
 considers that the international application does not comply with
 the requirement of unity of invention as set forth in the
 Regulations, it may invite the applicant, at his option, to restrict
 the claims so as to comply with the requirement or to pay additional
 fees.
 

 *****

 (c) If the applicant does not comply with the invitation
 referred to in subparagraph (a) within the prescribed time limit,
 the International Preliminary Examining Authority shall establish an
 international preliminary examination report on those parts of the
 international application which relate to what appears to be the
 main invention and shall indicate the relevant facts in the said
 report. The national law of any elected State may provide that,
 where its national Office finds the invitation of the International
 Preliminary Examining Authority justified, those parts of the
 international application which do not relate to the main invention
 shall, as far as effects in that State are concerned, be considered
 withdrawn unless a special fee is paid by the applicant to that
 Office.
 

 
 

 
 *****

 

 
 37 CFR 1.488 Determination of unity of invention before the International Preliminary
 Examining Authority. 

 
 (a) Before establishing any written opinion or the
 international preliminary examination report, the International Preliminary
 Examining Authority will determine whether the international application
 complies with the requirement of unity of invention as set forth in §
 1.475 .
 

 (b) If the International Preliminary Examining Authority
 considers that the international application does not comply with the
 requirement of unity of invention, it may:
 
 (1) Issue a written opinion and/or an international
 preliminary examination report, in respect of the entire
 international application and indicate that unity of invention is
 lacking and specify the reasons therefor without extending an
 invitation to restrict or pay additional fees. No international
 preliminary examination will be conducted on inventions not
 previously searched by an International Searching Authority.
 

 (2) Invite the applicant to restrict the claims or pay
 additional fees, pointing out the categories of invention found,
 within a set time limit which will not be extended. No international
 preliminary examination will be conducted on inventions not
 previously searched by an International Searching Authority, or
 

 (3) If applicant fails to restrict the claims or pay
 additional fees within the time limit set for reply, the
 International Preliminary Examining Authority will issue a written
 opinion and/or establish an international preliminary examination
 report on the main invention and shall indicate the relevant facts
 in the said report. In case of any doubt as to which invention is
 the main invention, the invention first mentioned in the claims and
 previously searched by an International Searching Authority shall be
 considered the main invention.
 

 
 

 (c) Lack of unity of invention may be directly evident before
 considering the claims in relation to any prior art, or after taking the
 prior art into consideration, as where a document discovered during the
 search shows the invention claimed in a generic or linking claim lacks
 novelty or is clearly obvious, leaving two or more claims joined thereby
 without a common inventive concept. In such a case the International
 Preliminary Examining Authority may raise the objection of lack of unity of
 invention.
 

 
 

 The examiner will usually begin the preliminary examination by checking
 the international application for unity of invention. The international preliminary
 examination will only be directed to inventions which have been searched by the
 International Searching Authority. All claims directed to inventions which have not been
 searched by the International Searching Authority will not be considered by the
 International Preliminary Examining Authority. If the examiner in the International
 Preliminary Examining Authority finds lack of unity of invention in the claims to be
 examined, an invitation is normally prepared and sent to the applicant requesting the
 payment of additional fees or the restriction of the claims on Form PCT/IPEA/405. Such
 an invitation will include the identification of what the examiner considers to be the
 “main invention” which will be examined if no additional fees are paid or restriction is
 made by the applicant.
 

 The procedure before the International Preliminary Examining Authority
 regarding lack of unity of invention is governed by PCT Article 34(3)(a) through (c) ,
 PCT Rule
 68 (see also PCT Rule 70.13 ), and
 37 CFR
 1.475 and 1.488 . It should be noted that in
 most instances lack of unity of invention will have been noted and reported upon by the
 International Searching Authority which will have drawn up an international search
 report and a written opinion based on those parts of the international application
 relating to the invention, or unified linked group of inventions, first mentioned in the
 claims (“main invention”), unless the applicant has paid additional fees . If the
 applicant has paid additional search fees, additional inventions would also have been
 searched. No international preliminary examination will be conducted on inventions not
 previously searched by an International Searching Authority ( 37 CFR
 1.488(b)(2) ). 
 

 If the examiner determines that unity of invention is lacking, there are
 two options:
 

 
 (A) The examiner may conduct an international preliminary
 examination covering all the claimed and previously searched inventions and
 indicate that unity of invention is lacking and specify the reasons therefor
 without extending an invitation to restrict or pay additional fees
 ( PCT Rule
 68.1 ), or 
 

 (B) The examiner may invite the applicant to restrict the claims,
 so as to comply with the requirement, or pay additional fees, pointing out the
 categories of invention found using Form PCT/IPEA/405 or USPTO/499 (telephone
 practice). See MPEP § 1875.01 . The invitation to restrict or pay
 additional fees shall state the reasons for which the international application
 is considered as not complying with the requirement of unity of invention.
 ( PCT Rule
 68.2 ). Inventions not previously searched will not be
 considered or included in the invitation. 
 

 
 The written opinion, if any, and the international preliminary
 examination report must be established on all inventions for which examination fees have
 been paid.
 

 If the applicant fails to reply to the invitation to restrict the
 claims or pay additional examination fees due to lack of unity of invention (by not
 paying the additional fees or by not restricting the claims either sufficiently or at
 all), the written opinion, if any, and international preliminary examination report must
 be established on the claims directed to what appears to be the main invention
 ( PCT Article
 34(3)(c) ). The main invention, in case of doubt, is the first
 claimed invention for which an international search report has been issued by the
 International Searching Authority. The main invention, as viewed by the examiner, must
 be set forth on Form PCT/IPEA/405. 
 

 If the applicant timely complies with the invitation to pay additional
 fees even under protest, or to restrict the claims, the examiner carries out
 international preliminary examination on those claimed inventions for which additional
 fees have been paid or to which the claims have been restricted. It should be noted that
 the national law of any elected State may provide that, where its national Office finds
 the invitation of the International Preliminary Examining Authority justified, those
 parts of the international application which do not relate to the main invention shall,
 as far as effects in that State are concerned, be considered withdrawn unless a special
 fee is paid by the applicant to that Office ( PCT Article 34(3)(c) ). Whether or
 not the question of unity of invention has been raised by the International Searching
 Authority, it may be considered by the examiner when serving as an authorized officer of
 the International Preliminary Examining Authority. In the examiner’s consideration, all
 documents cited by the International Searching Authority should be taken into account
 and any additional relevant documents considered. However, there are cases of lack of
 unity of invention, where, compared with the procedure of inviting the applicant to
 restrict the international application or pay additional fees ( PCT Rule 68.2 ),
 little or no additional effort is involved in establishing the written opinion , if any,
 and the international preliminary examination report for the entire international
 application. Then reasons of economy may make it advisable for the examiner to use the
 option referred to in PCT Rule 68.1 by choosing not to invite the applicant to
 restrict the claims or to pay additional fees.
 

 Unity of invention is defined by 37 CFR 1.475 which describes the
 circumstances in which the requirement of unity of invention is considered fulfilled. 
 

 
 1875.01 Preparation of Invitation Concerning Unity [R-07.2015]

 The “Invitation to restrict or pay additional fees,” Form
 PCT/IPEA/405, is used to invite the applicant, at his/her option, to restrict the
 claims to comply with the requirements of unity of invention or to pay additional
 examination fees. In addition, the examiner must explain the reasons why the
 international application is not considered to comply with the requirement of unity
 of invention. The examiner must also specify, on Form PCT/IPEA/405, at least one
 group or groups of claims which, if elected, would comply with the requirement for
 unity of invention.
 

 I. INVITATION TO RESTRICT OR PAY ADDITIONAL FEES In the space provided on form PCT/IPEA/405, the examiner should
 identify the disclosed inventions by claim numerals and indicate which disclosed
 inventions are so linked as to form a single general inventive concept, thereby
 complying with the requirement of unity of invention. For example, claims to
 different categories of invention such as a product, claims to a process
 specifically adapted for the manufacture of the product and a claim for a use of
 the product would be considered related inventions which comply with the unity
 of invention requirement, whereas a claim to an apparatus for making the product
 in the same application would be considered a second invention for which
 additional fees would be required. The reasons for holding that unity of
 invention is lacking must be specified. See 37 CFR 1.475 and Chapter 10
 of the International Search and Preliminary Examination Guidelines which can be
 obtained from WIPO’s website ( www.wipo.int/pct/en/texts/gdlines.html ). 
 

 Also, the examiner should specify the main invention and claims
 directed thereto which will be examined if the applicant fails to restrict or
 pay additional fees. The main invention, in case of doubt, is the first claimed
 invention or related invention before the International Preliminary Examining
 Authority for which a search fee has been paid and an international search
 report has been prepared.
 

 The examiner should indicate the total amount of additional fees
 required for examination of all claimed inventions.
 

 In the box provided at the top of the form, the time limit of
 one month for response is set according to PCT Rule 68.2 . Extensions
 of time are not permitted. 
 

 Since the space provided on Form PCT/IPEA/405 is limited,
 supplemental attachment sheets, supplied by the examiner, with reference back to
 the specific section, should be incorporated whenever necessary.
 

 II. AUTHORIZED OFFICER Form PCT/IPEA/405 must be signed by an examiner with at least
 partial signatory authority.
 

 III. TELEPHONIC RESTRICTION PRACTICE Telephone practice may be used to allow applicants to elect an
 invention to be examined or to pay additional fees if:
 

 
 (A) Applicant or applicant’s legal representative has a
 USPTO deposit account,
 

 (B) Applicant or the legal representative or agent orally
 agrees to charge the additional fees to the account, and
 

 (C) A complete record of the telephone conversation is
 included with the written opinion, if any, or the international
 preliminary examination report, including:
 
 (1) Examiner’s name;

 (2) Authorizing attorney’s name;

 (3) Date of conversation;

 (4) Invention elected and/or inventions for which
 additional fees paid; and
 

 (5) Deposit account number and amount to be
 charged.
 

 
 

 
 When the telephone practice is used in making lack of unity
 requirements, it is critical that the examiner orally inform applicant that
 there is no right to protest the holding of lack of unity of invention for any
 group of invention(s) for which no additional examination fee has been paid.
 

 The examiner must further orally advise applicant that any
 protest to the holding of lack of unity or the amount of additional fee required
 must be filed in writing no later than one month from the mailing date of the
 written opinion or the international preliminary examination report if the lack
 of unity holding is first mailed with the IPER because there was no written
 opinion. The examiner should fill in the information on Form USPTO/499 “Chapter
 II PCT Telephone Memorandum for Lack of Unity” as a record of the telephonic
 holding of lack of unity.
 

 If applicant refuses to either restrict the claims to one
 invention or authorize payment of additional fees, or if applicant does not have
 a deposit account, Form PCT/IPEA/405 should be prepared and mailed to
 applicant.
 

 If a written invitation is required, the examiner should, if
 possible, submit that written invitation to the TC for review and mailing within
 7 days from the date the international application is charged to the
 examiner.
 

 See MPEP § 1850 for form
 paragraphs for lack of unity in international applications.
 

 

 
 1875.02 Reply to Invitation Concerning Lack of Unity of
 Invention [R-07.2022]
 

 
 PCT Administrative Instructions Section 603 

 Transmittal of Protest Against Payment
 of Additional Fees and Decision Thereon Where International Application Is
 Considered to Lack Unity of Invention 

 The International Preliminary Examining Authority shall
 transmit to the applicant, preferably at the latest together with the
 international preliminary examination report, any decision which it has taken
 under Rule
 68.3(c) on the protest of the applicant against payment
 of additional fees where the international application is considered to lack
 unity of invention. At the same time, it shall transmit to the International
 Bureau a copy of both the protest and the decision thereon, as well as any
 request by the applicant to forward the texts of both the protest and the
 decision thereon to the elected Offices.
 

 

 
 37 CFR 1.489 Protest to lack of unity of invention before the International
 Preliminary Examining Authority. 

 
 (a) If the applicant disagrees with the holding of lack of
 unity of invention by the International Preliminary Examining Authority,
 additional fees may be paid under protest, accompanied by a request for
 refund and a statement setting forth reasons for disagreement or why the
 required additional fees are considered excessive, or both.
 

 (b) Protest under paragraph (a) of this section will be
 examined by the Director or the Director’s designee. In the event that
 the applicant’s protest is determined to be justified, the additional
 fees or a portion thereof will be refunded.
 

 (c) An applicant who desires that a copy of the protest and
 the decision thereon accompany the international preliminary examination
 report when forwarded to the Elected Offices, may notify the
 International Preliminary Examining Authority to that effect any time
 prior to the issuance of the international preliminary examination
 report. Thereafter, such notification should be directed to the
 International Bureau.
 

 
 

 Applicant may reply directly to the International Preliminary
 Examining Authority issuing the invitation by paying some or all additional fees or
 by restricting the claims to one invention. If applicant makes no reply within the
 set time limit, the international preliminary examination will proceed on the basis
 of the main invention only.
 

 If applicant has paid an additional fee or fees, a protest to the
 holding of lack of unity of invention may be filed with the International
 Preliminary Examining Authority. The IPEA/US does not charge a protest fee under
 PCT Rule
 68.3(e) .
 

 I. NOTIFICATION OF DECISION ON PROTEST Form PCT/IPEA/420 is used by the Technology Center (TC) to
 inform the applicant of the decision regarding applicant’s protest on the
 payment of additional fees concerning unity of invention.
 

 II. NOTIFICATION The TC checks the appropriate box, i.e., 1 or 2. If box 2 is
 checked, a clear and concise explanation as to why the protest concerning the
 unity of invention was found to be unjustified must be given.
 

 Since the space is limited, supplemental attachment sheet(s)
 should be incorporated whenever necessary.
 

 III. AUTHORIZED OFFICER Form PCT/IPEA/420 must be signed by a TC Director. See
 MPEP §
 1002.02(c) , item (2). 
 

 

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 1801-Basic Patent Cooperation Treaty (PCT) Principles 

 1802-PCT Definitions 

 1803-Reservations Under the PCT Taken by, and Notifications of Incompatibility Made by, the United States of America 

 1804-[Reserved] 

 1805-Where To File an International Application 

 1806-Applicants and Inventors 

 1807-Agent or Common Representative and General Power of Attorney 

 1808-Change in or Revocation of the Appointment of an Agent or a Common Representative 

 1809-Access to the USPTO patent electronic filing system 

 1810-Filing Date Requirements 

 1811-[Reserved] 

 1812-Elements of the International Application 

 1813 - 1816-[Reserved] 

 1817-PCT Member States 

 1818-[Reserved] 

 1819-Earlier Search 

 1820-Signature of Applicant 

 1821-The Request 

 1822-[Reserved] 

 1823-The Description 
 1823.01-Reference to Deposited Biological Material 

 1823.02-Filing Nucleotide and/or Amino Acid Sequence Listings in International Applications 

 
 

 1824-The Claims 

 1825-The Drawings 

 1826-The Abstract 

 1827-Fees 
 1827.01-Refund of International Application Fees 

 
 

 1828-Priority Claim and Document 
 1828.01-Restoration of the Right of Priority 

 1828.02-Continuation or Continuation-in-Part Indication in the Request 

 
 

 1829-[Reserved] 

 1830-International Application Transmittal Letter 

 1831-[Reserved] 

 1832-License Request for Foreign Filing Under the PCT 

 1833-[Reserved] 

 1834-Correspondence 
 1834.01-Filing of Correspondence by Facsimile 

 1834.02-Irregularities in the Mail or Electronic Communications Service 

 
 

 1835-[Reserved] 

 1836-Rectification of Obvious Mistakes 

 1837 - 1839-[Reserved] 

 1840-The International Searching Authority 
 1840.01-The European Patent Office as an International Searching Authority 

 1840.02-The Korean Intellectual Property Office as an International Searching Authority 

 1840.03-The Australian Patent Office (IP Australia) as an International Searching Authority 

 1840.04-[Reserved] 

 1840.05-The Israel Patent Office (ILPO) as an International Searching Authority 

 1840.06-The Japan Patent Office (JPO) as an International Searching Authority 

 1840.07-The Intellectual Property Office of Singapore (IPOS) as an International Searching Authority 

 
 

 1841-[Reserved] 

 1842-Basic Flow Under the PCT 

 1843-The International Search 
 1843.01-Prior Art for Chapter I Processing 

 1843.02-Certain Subject Matter Need Not Be Searched 

 1843.03-No Search Required if Claims Are Unclear 

 1843.04-Procedure for Claims Not Required To Be Searched and for Claims That Are Unclear 

 1843.05-Time Limit for Establishing the International Search Report and the Written Opinion of the International Searching Authority 

 
 

 1844-The International Search Report 
 1844.01-Preparing the International Search Report (Form PCT/ISA/210) 

 
 

 1845-Written Opinion of the International Searching Authority 
 1845.01-Preparing the Written Opinion of the International Searching Authority (Form PCT/ISA/237) 

 1845.02-Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority,
 or the Declaration (Form PCT/ISA/220) 

 
 

 1846 - 1847-[Reserved] 

 1848-Sequence Listings 

 1849-[Reserved] 

 1850-Unity of Invention Before the International Searching Authority 

 1851-Identification of Patent Documents 

 1852-Taking Into Account Results of Earlier Search(es) 

 1853-Amendment Under PCT Article 19 

 1854 - 1855-[Reserved] 

 1856-Supplementary International Searches 

 1857-International Publication 

 1858-[Reserved] 

 1859-Withdrawal of International Application, Designations, or Priority Claims 

 1860-International Preliminary Examination Procedure 

 1861-[Reserved] 

 1862-Agreement With the International Bureau To Serve as an International Preliminary Examining Authority 

 1863-[Reserved] 

 1864-The Demand and Preparation for Filing of Demand 
 1864.01-Amendments Filed Under PCT Article 34 

 1864.02-Applicant’s Right To File a Demand 

 1864.03-States Which May Be Elected 

 1864.04-Agent’s Right To Act 

 
 

 1865-Filing of Demand 

 1866-[Reserved] 

 1867-Preliminary Examination Fees 

 1868-Correction of Defects in the Demand 

 1869-Notification to International Bureau of Demand 

 1870-Priority Document and Translation Thereof 

 1871-Processing Amendments Filed Under Article 19 and Article 34 Prior to or at the Start of International Preliminary Examination 

 1872-Availability of the International Application File for International Preliminary Examination by the Examining Corps 

 1873-[Reserved] 

 1874-Determination if International Preliminary Examination Is Required and Possible 

 1875-Unity of Invention Before the International Preliminary Examining Authority 
 1875.01-Preparation of Invitation Concerning Unity 

 1875.02-Reply to Invitation Concerning Lack of Unity of Invention 

 
 

 1876-Notation of Errors and Informalities by the Examiner 
 1876.01-Request for Rectification and Notification of Action Thereon 

 
 

 1877-Nucleotide and/or Amino Acid Sequence Listings During the International Preliminary Examination 

 1878-Preparation of the Written Opinion of the International Preliminary Examining Authority 
 1878.01-Includes Subsections Regarding Prior Art, Novelty, Inventive Step, and Industrial Applicability for Purposes of the Written
 Opinion and the International Preliminary Examination Report 
 1878.01(a)-Prior Art for Purposes of the Written Opinion and the International Preliminary Examination Report 
 1878.01(a)(1)-Novelty for Purposes of the Written Opinion and the International Preliminary Examination Report 

 1878.01(a)(2)-Inventive Step for Purposes of the Written Opinion and the International Preliminary Examination Report 

 1878.01(a)(3)-Industrial Applicability for Purposes of the Written Opinion and the International Preliminary Examination Report 

 
 

 
 

 1878.02-Reply to the Written Opinion of the ISA or IPEA 

 
 

 1879-Preparation of the International Preliminary Examination Report 
 1879.01-Time Limit for Preparing Report 

 1879.02-Transmittal of the International Preliminary Examination Report and Related Documents 

 1879.03-Translations 

 1879.04-Confidential Nature of the Report 

 
 

 1880-Withdrawal of Demand or Election 

 1881-Receipt of Notice of Election and Preliminary Examination Report by the United States Patent and Trademark Office 

 1882 - 1892-[Reserved] 

 1893-National Stage (U.S. National Application Filed Under 35 U.S.C. 371) 
 1893.01-Commencement and Entry 
 1893.01(a)-Entry via the U.S. Designated or Elected Office 
 1893.01(a)(1)-Submissions Required by 30 Months from the Priority Date 

 1893.01(a)(2)-Article 19 Amendment (Filed With the International Bureau) 

 1893.01(a)(3)-Article 34 Amendments (Filed with the International Preliminary Examining Authority) 

 1893.01(a)(4)-Claim Amendment (Filed With the U.S. Designated or Elected Office) 

 
 

 1893.01(b)-Applicant for a U.S. National Stage Application 

 1893.01(c)-Fees 

 1893.01(d)-Translation 

 1893.01(e)-Inventor’s Oath or Declaration 

 
 

 1893.02-Abandonment 

 1893.03-Prosecution of U.S. National Stage Applications Before the Examiner 
 1893.03(a)-How To Identify That an Application Is a U.S. National Stage Application 

 1893.03(b)-The Filing Date of a U.S. National Stage Application 

 1893.03(c)-The Priority Date, Priority Claim, and Priority Papers for a U.S. National Stage Application 

 1893.03(d)-Unity of Invention 

 1893.03(e)-Documents Received from the International Bureau and Placed in a U.S. National Stage Application File 
 1893.03(e)(1)-Title of the Invention 

 
 

 1893.03(f)-Drawings and PCT Rule 11 

 1893.03(g)-Information Disclosure Statement in a National Stage Application 

 
 

 
 

 1894-[Reserved] 

 1895-A Continuation, Divisional, or Continuation- in- Part Application of a PCT Application Designating the United States 
 1895.01-Handling of and Considerations in the Handling of Continuations, Divisions, and Continuations-In-Part of PCT Applications 

 
 

 1896-The Differences Between a National Application Filed Under 35 U.S.C. 111(a) and a National Stage Application Submitted Under
 35 U.S.C. 371 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:29