4.5 Applications falling under Rule 62a and lacking unity

There are cases where the application not only does not comply with Rule 43(2) (see B‑VIII, 4.1 and F‑IV, 3.2) but also lacks unity of invention under Art. 82 and Rule 44. Sometimes it is enough for the search division to raise only the issue of unity of invention and send an invitation under Rule 64(1) (see B‑VII, 1.1 and B-VII, 1.2).

In other cases, however, the search division may need to apply the procedures under both Rule 64(1) (i.e. invite the applicant to pay further search fees for inventions other than the one first mentioned in the claims) and Rule 62a(1) (i.e. invite the applicant to indicate the independent claims to be searched). It will then send the applicant the invitation under Rule 62a(1) first.

Where the lack of unity is already apparent when the invitation under Rule 62a(1) is sent, it will also identify the invention (or group of inventions) first mentioned in the claims ("first invention" ‒ see F‑V, 3.4) and the claims which relate to it, either in full or in part, and ask the applicant to indicate which claims to search. If the applicant has not replied by expiry of the time limit under Rule 62a(1), the claims to be searched for the first invention will be determined according to the procedures described in B‑VIII, 4.2. A partial search report will then be drawn up on this first invention and sent to the applicant, along with an invitation to pay further search fees under Rule 64(1) for the other inventions and a provisional opinion on the first invention's patentability that includes the reasons for the non-unity findings. Where appropriate, this invitation under Rule 64(1) may also include an invitation under Rule 62a(1) asking the applicant to clarify the claims to be searched in respect of any other inventions for which they later pay further search fees.

However, it can also happen that, after the invitation under Rule 62a(1) has been sent for all claims, the claims which comply with Rule 43(2) and so are searched (as determined according to the procedures in B‑VIII, 4.2) are found to be open to an objection of lack of unity a posteriori. An invitation to pay further search fees under Rule 64(1) will then be sent, but only in relation to the subject-matter of the claims determined by the applicant's reply (or lack of reply) to the invitation under Rule 62a(1).