Procedure Before the International Searching Authority
(3)(a) If the International Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in the Regulations, it shall invite the applicant to pay additional fees. The International Searching Authority shall establish the international search report on those parts of the international application which relate to the
invention first mentioned in the claims (“main invention”) and, provided the required additional fees have been paid within the prescribed time limit, on those parts of the international application which relate to inventions in respect of which the said fees were paid.
PARAGRAPH (3)(a): The concept of unity of invention is defined in Rule 13, and the procedure before the International Searching Authority in case of lack of unity of invention is governed by Rule 40. See Rule 40.3, for the prescribed time limit for payment of the additional fees. The additional fees may be paid under protest (see Rule 40.2(c)). There is no possibility of dividing the international application in the international phase.
It goes without saying that any designated Office or the courts of any designated State may disagree with the interpretation that the International Searching Authority gives to Rule 13 in any given case. Consequently, for example:
(i) The International Searching Authority has asked for additional fees: the designated Office or the courts of the designated State may still consider that there is unity of invention, even if the applicant has complied with the invitation of the Authority.
(ii) The said Authority has asked for X number of additional fees: the designated Office may still ask for a division of the application into Y number of parts, even if the applicant has complied with the invitation of the Authority.
(iii) The said Authority has not asked for additional fees: the designated Office or the courts of the designated State may still find that there is no unity of invention, with the consequences which its national law provides for such cases.
PARAGRAPH (3)(b): The consequences provided for in this paragraph are the only consequences of not complying with the invitation issued under paragraph (3)(a).
“National law” and “national Office” are defined in Article 2(x) and (xii), respectively. ×