The Canadian Intellectual Property Office has opened a consultation period on its proposed practice notice regarding unity of invention pursuant to section 36 of the Patent Act. The proposed practice notice restates the Patent Office policy currently expressed in the Manual of Patent Office Practice, that the claims of an application must have at least one common technical feature that makes a contribution over the prior art.
The proposed notice also explains that the patent examiner has discretion to either defer a search of the prior art until the question of unity of invention has been resolved, or to limit a search of the prior art and scope of examination to an invention recited in a group of claims if there are reasonable grounds to believe that is the group the applicant will elect. Furthermore, if the question of unity of invention is raised in more than one report and it appears that an impasse has been reached between the examiner and the applicant regarding compliance with s. 36 of the Act, the application will be referred to the Commissioner of Patents for a determination whether the application does comply. If it is determined that the application lacks unity of invention, then the applicant will be directed to limit the application to one invention only pursuant to s. 36(2.1) of the Act, failing which the application may be refused.
The consultation period runs from February 3 to March 5, 2009.