F-V Unity Flashcards
- Introduction
The basic principle behind the requirement of unity is that a patent is granted for each invention separately, i.e. in order to proceed to grant, a European patent application is required to contain claims relating to one invention only (G 2/92, Reasons 2).
This requirement of unity is further justified by the principle of equal treatment of applicants: any applicant is entitled to the same rendered service against the paid fees, i.e. one search/examination against one search/examination fee.
Therefore at the search stage, if an application as filed is considered by the search division to relate to more than one invention, a search fee may be paid for each such invention, and the search report will be drawn up only in respect of inventions for which search fees have been paid. At the examination stage the applicant can select only one searched invention in each application to be examined for conformity with the patentability and other requirements of the EPC (see G 2/92, Reasons 2).
Art. 82 and Rule 44 govern the application of the requirement of unity to European patent applications. This requirement is not applicable in opposition proceedings (G 1/91).
This chapter deals with the substantive aspects of the assessment of unity of invention (F‑V, 2 and F‑V, 3), as well as some procedural aspects relating to lack of unity during search (F‑V, 4) and lack of unity during substantive examination (F‑V, 5). Aspects of unity of invention in the case of amended claims and Euro-PCT applications are dealt with in F‑V, 6 and F‑V, 7 respectively. Further aspects related to the procedural implementation of unity of invention in search and examination are to be found in chapters B‑VII and C‑III respectively.
Rule 64
Given the harmonisation of the definitions concerning unity of invention in Rules 13(1) PCT and Rule 13(2) PCT versus Art. 82 and Rule 44(1) respectively, the criteria for unity in both systems are the same. Hence, unity of invention is examined in search and substantive examination in both European and PCT procedures according to the same principles. This does not apply to the respective procedures themselves, where significant differences exist.
Consequently, decisions of the boards of appeal rendered according to the former PCT protest procedures continue to be of interest for the consideration of unity in European applications.
- Requirement of unity of invention
A European patent application must relate to one invention only or relate to a group of inventions which must be so linked as to form a single general inventive concept (see also B‑VII, 1).
The requirement of unity of invention needs to be assessed only if a group of inventions is claimed. A group of inventions may be formed, for example, by a plurality of independent claims in the same or in different categories, a plurality of alternative inventions defined within a single independent claim (see also F‑IV, 3.7) or a plurality of dependent claims where the independent claim is either not novel or not inventive.
Art. 82
If a group of inventions is claimed, the requirement that the inventions in this group are so linked as to form a single general concept (Art. 82) is fulfilled only if there is a technical relationship among the claimed inventions involving one or more of the same or corresponding special technical features.
The term “special” means that the features in question define the contribution that the invention considered as a whole makes over the “prior art at hand” in terms of novelty and inventive step. The “prior art at hand”, i.e. the prior art relied upon in the non-unity assessment, may vary depending on the stage of proceedings (see F‑V, 3).
The term “same” means that the special technical features are identical or define an identical chemical structure.
The term “corresponding” means that the special technical features achieve the same technical effect or solve the same technical problem. Correspondence may be found for example in alternative solutions, or interrelated features, e.g. the interaction between a plug and a socket causing a releasable electrical connection, or in a causal relationship such as a step in a manufacturing process that causes a certain structural feature in a product. For example, an application might include two sets of claims, one comprising a metal spring, and another comprising a block of rubber. The metal spring and block of rubber may be considered to be corresponding technical features as they both achieve the same technical effect of resilience.
In contrast, features that are not shared, i.e. features that only appear in some but not in other claims, cannot be part of the single general inventive concept.
2.1 Insufficient grounds for lack of unity
When determining unity of invention, a finding of lack of clarity of the claims is on its own not sufficient grounds for a finding of lack of unity.
Normally, too, the sequence of the claims has no impact on the determination of unity of invention. However, it will have an impact on which invention is to be considered the first invention mentioned in the claims (see F‑V, 3.4).
Moreover, the fact that the claimed separate inventions belong to different groups of the classification is not in itself a reason for a finding of lack of unity.
Art. 84
If an application contains claims of different categories or several independent claims of the same category, this is not in itself a reason for an objection of lack of unity of invention (the relationship between Rule 43(2) and Art. 82 is explained in more detail in F‑V, 3.2.1).
Lack of unity does not arise because of one claim containing a number of individual features, where these features do not present a technical interrelationship (i.e. a combination), but merely a juxtaposition (see G‑VII, 7).
By definition, no lack of unity can be present between an independent claim and its dependent claims, even if the features of the dependent claims are juxtaposed with the features of the independent claim (see F‑V, 3.2.3).
2.2 Division’s approach
Lack of unity is not a ground of revocation in later proceedings. Therefore, although the objection is certainly made and amendment insisted upon in clear cases, it is neither raised nor insisted upon on the basis of a narrow, literal or academic approach. This is particularly so during search when the possible lack of unity does not necessitate a further search.
When a lack of unity is established, the claimed subject-matter is divided into separate inventions and/or inventions grouped together in view of their technical relationships (see F‑V, 3.2), i.e. according to any common matter comprising same or corresponding potential special technical features. In this context, an invention must have technical character and be concerned with a technical problem within the meaning of Art. 52(1) (see G‑I, 1), but it does not necessarily need to meet other requirements for patentability, such as novelty and inventive step (see G‑VI and G‑VII).
Lack of unity may be evident a priori, i.e. prior to carrying out a prior-art search, or may become apparent a posteriori, i.e. after taking into account the prior art revealed by the search in terms of novelty and inventive step.
- Assessment of unity
The assessment of unity of invention serves to determine if the subject-matter of the claims have anything in common that represents a single general inventive concept (Art. 82). If any of the claims contain one or more alternatives, each of the alternatives is considered as if it were a separate claim for the purpose of assessing lack of unity.
A substantive assessment of unity of invention requires
(i)
determining, in the light of the application as a whole, the common matter, if any, between the claims of the different claimed inventions that the examiner provisionally identifies (see F‑V, 2.2, 3.2 and 3.4);
(ii)
comparing the common matter with the “prior art at hand” to examine whether the common matter makes a contribution over that prior art, namely whether it comprises “special” technical features within the meaning of Rule 44(1);
(iii)
if the common matter does not comprise special technical features, analysing any remaining technical features which are not part of the identified common matter to determine if there is a unifying technical relationship among some of the claims.
For example, lack of unity may arise among the dependent claims if the independent claim upon which they depend does not comprise any features making a technical contribution over the prior art at hand. In such a case, the independent claim would not provide a unifying technical relationship among the dependent claims as required by Rule 44(1) as it would not contain any “special technical features”.
(i)
Determining the common matter
Common matter represents a potential single general inventive concept among the claims. It may be present in features which are the same or corresponding (see F‑V, 2), namely in features that are either identical to each other or that provide alone or in combination a common technical effect or a solution to a common technical problem.
The technical problem in the non-unity assessment may be different from that in a patentability assessment since the overall object is to find out what the claims have in common.
When analysing the technical problem in a non-unity assessment, the starting point is usually what is considered by the applicant in the description as having been achieved. In this regard, the applicant must disclose the invention in such terms that the technical problem and its solution can be understood, and state any advantageous effects of the invention with reference to the background art (Rule 42(1)(c)). This technical problem defines in the first instance the common matter of the claims.
However, for the purpose of considering unity of invention, the division is not restricted to the general concept of what the applicant subjectively claims to be his invention (G 1/89 and G 2/89).
The technical problem put forward by the applicant in the description may, on closer examination, reveal itself as unsuitable as a means of linking the subject-matter of the claims in such a way that they form a single general inventive concept. This may happen either where, in view of the information contained in the description and the common general knowledge of the skilled person, it is evident that different claims solve different problems (a priori assessment of lack of unity) or where the search reveals prior art which discloses or renders obvious a solution of the unifying technical problem stated by the applicant in the description (a posteriori assessment of lack of unity). In the latter case, the technical problem stated by the applicant may no longer constitute the single general inventive concept required by Art. 82 since it cannot be regarded as inventive.
For example, a prior-art document under Art. 54(2) disclosing all the features of an independent claim also discloses, at least implicitly, the technical problem stated by the applicant since by definition this problem must be solved by the features of said independent claim.
The division will then proceed to analyse if any other common matter is present among the claims, i.e. identify, in the light of the application as a whole, any technical features of the claims that are the same or corresponding. When determining whether technical features are corresponding, it is important that the technical problems solved, which are associated with the technical effects, are not formulated too narrowly or too generally. If the technical problems are too narrow when they could have been more general, they may have nothing in common leading to the possibly wrong conclusion that technical features are not corresponding. If they are too general when they could have been narrower, the common aspects of the problem may be known, also leading to the possibly wrong conclusion that there is a lack of unity.
For example, a membrane and a diaphragm may achieve the technical effect of “providing resilience” and hence may be corresponding features.
Common matter may not only be found in features of claims in the same category but may also be embodied in features of claims of different categories. For example, in the case of a product, a process specially adapted for the manufacture of said product and the use of said product, the product may represent the common matter which is present in the use and in the process as the effect or result of the process.
Common matter may also be embodied in interrelated product features (e.g. a plug and a socket). Although corresponding features in interrelated products may be formulated quite differently, if in their interaction they contribute to the same technical effect or to the solution of the same technical problem, they may be part of the common matter.
There may be cases where no common matter at all can be identified. Then the application lacks unity because neither a technical relationship within the meaning of Rule 44(1) is present between the independent claims, nor does the application entail a single general inventive concept within the meaning of Art. 82.
(ii)
Comparison of the common matter with the prior art at hand
If common matter, namely subject-matter involving the same or corresponding technical features, is identified in the claims, it must be compared with the prior art at hand. If the common matter defines a non-obvious contribution over that prior art, it will involve “special technical features”, and the inventions concerned will be so linked as to form a single general inventive concept. Otherwise, if the common matter is known or obvious from the prior art at hand, then the application lacks unity. This assessment is to be done on the basis of an assessment of novelty and inventive step vis-à-vis the prior art at hand. The obviousness is to be assessed, whenever appropriate, using the problem-solution approach.
The common matter may involve features defining technical alternatives. If the common technical effect to be achieved by these technical alternatives is already known, or may be recognised as generally desirable (a mere desideratum), or is obvious, these alternative features cannot be considered as defining a technical relationship within the meaning of Rule 44(1) because there is no inventive merit in formulating the problem.
The “prior art at hand”, i.e. the prior art relied upon in the non-unity assessment, may vary depending on the stage of proceedings. For example, where the assessment is carried out before the search (“a priori assessment”), the only “prior art at hand” may be the background art provided by the applicant in the description and any common general knowledge. During the search, other prior art may be revealed and may form the basis for the “a posteriori assessment”. Therefore, the “prior art at hand” may change during the course of the proceedings. For this reason the assessment of unity is iterative.
(iii)
Analysis of the remaining technical features
If the comparison of the common matter under (ii) leads to the finding of a lack of unity, as a next step, the groups of different inventions present in the claims need to be confirmed or refined (see F‑V, 3.2).
In order to determine these groups of inventions, the remaining technical features not forming part of the identified common matter need to be analysed. In most cases, each group will comprise several claims. This grouping is performed on the basis of the technical problems associated with the remaining technical features of each of the claims. Those claims comprising remaining technical features associated with the same technical problem are combined into a single group. However, if the technical problem has been successfully solved in the prior art, claims associated with the same technical problem may be placed into different groups (see F‑V, 3.3.1(iii)(c)).
The technical problems associated with the claims must be formulated with care. It may not be sufficient to analyse the remaining technical features of each claim in isolation, but rather to analyse their effect when read in the context of the individual claim as a whole and in the light of the description. When formulating the technical problems of the various inventions in a unity assessment, a very narrow approach should be avoided since the aim of the exercise is to see whether any commonality may be established between the inventions. It is therefore often necessary to redefine the very specific problems associated with each of the claims to arrive at a more general problem, while bearing in mind the context in which the relevant features are disclosed.
For the grouping, it is irrelevant whether or not the subject-matter of the claims or of the remaining technical features of the claims are novel or inventive over the prior art at hand. However, it is relevant for assessing whether or not the applicant is to be invited to pay an additional search fee for a group (see F‑V, 4).
If the problem(s) associated with the different groups is (are) either known from the prior art at hand or is (are) different from each other, then the finding of step (ii) that there exists a lack of unity is confirmed.
3.1.1 Non-unity and prior art under Art. 54(3)
Documents cited under Art. 54(3) should be disregarded in the evaluation of unity of invention since they cannot anticipate the inventive concept of the application under examination.
3.1.2 Non-unity and prior art under Art. 54(2)
Documents cited under Art. 54(2) as accidental anticipation should be disregarded in the evaluation of unity of invention since they cannot anticipate the inventive concept of the application under examination (see H‑V, 4.2.1, G 1/03 and G 1/16).
3.2 Grouping of inventions
As a general rule, after the initial identification of subject-matter lacking unity, the claims and alternatives contained in claims are assigned to the identified groups of inventions. This step comprises the assessment of which of the remaining claims or alternatives in claims could potentially relate to the same technical problem. By doing so, groups of inventions are identified wherein each group of inventions relates to unitary subject-matter in view of the prior art at hand. If, in the course of grouping, the same special technical feature, which provides a contribution over the prior art, is identified in two groups of inventions, both groups of inventions need to be combined into one single group. Conversely, if, within one initial single group of inventions, claims or alternatives in claims are identified that are not linked by a potentially special technical feature, which provides a contribution over the prior art at hand, they will normally be separated into different groups of inventions. See also F‑V, 3(iii) for analysing features in their context rather than in isolation. The initial grouping of claims and alternatives in claims into different inventions may require re-evaluation during the course of assessment of unity of invention.
Typically, different groups of inventions are based on different independent claims of the same category, on alternatives defined in one independent claim (see F‑V, 3.2.1) or on dependent claims defining alternative embodiments, provided that the independent claim is either not novel or not inventive. However, different groups of inventions may also be based on independent claims in different categories if lack of unity is present between these claims.
3.2.1 Plurality of independent claims in the same category
Rule 43(2) defines in sub-paragraphs (a), (b) and (c) the situations where, without prejudice to the requirements of Art. 82, an application is allowed to comprise a plurality of independent claims in the same category (see F‑IV, 3.2 and 3.3). The express reference to Art. 82 in Rule 43(2) makes clear that the requirement for unity of invention must still be met. Where the application both lacks unity of invention and fails to comply with the requirements of Rule 43(2), it is at the discretion of the division to raise an objection under Rule 43(2) or Art. 82, or both.
A plurality of inventions in the same category may constitute a group of inventions so linked as to form a single general inventive concept. Examples of inventions in the same category are alternative forms of an invention or interrelated inventions.
Rule 43(2)
Alternative forms of an invention may be claimed either in a plurality of independent claims or in a single independent claim (see also F‑IV, 3.7). In the latter case, the presence of the two alternatives as independent forms may not be immediately apparent. In either case, the same criteria are applied in deciding whether or not there is unity of invention, and lack of unity of invention may therefore also exist within a single claim.
Several independent claims in the same category directed to interrelated subject-matter may meet the requirement of unity even if it appears that the claimed subject-matter is quite different, provided that technical features making a contribution over the prior art at hand are the same or corresponding. Examples of such situations include a transmitter and the corresponding receiver or a plug and the corresponding socket (see also F‑IV, 3.2).
Thus, special technical features relating to the single general inventive concept must be either implicitly or explicitly present in each of the independent claims.
3.2.2 Plurality of independent claims in different categories
A plurality of independent claims in different categories (see F‑IV, 3.1) may constitute a group of inventions so linked as to form a single general inventive concept as defined in Rule 44(2).
However, it is essential that a single general inventive concept link the claims in the various categories. The presence in each claim of expressions such as “specially adapted” or “specifically designed” does not necessarily imply that a single general inventive concept is present.
3.2.3 Dependent claims
A dependent claim and the higher-ranking claim on which it depends cannot be grouped into two different groups of inventions (see F‑V, 2.1).
If, however, the higher-ranking claim appears not to be patentable, then the question of whether there is still an inventive link between all the claims dependent on that higher-ranking claim needs to be carefully considered.
In this context it is important to verify that a claim that is drafted as a dependent claim is in fact a true dependent claim comprising all the features of the corresponding independent claim, see F‑IV 3.7. For a definition of a dependent claim, see F‑IV, 3.4 and 3.8.
3.2.4 Common dependent claims
While an independent claim is always part of the common matter among its dependent claims, the opposite is not true: a claim dependent on several independent claims is never part of the common matter between these independent claims.
Unity is assessed firstly between the independent claims. If a dependent claim comprises technical features common to several inventions, then it is part of all of these inventions at the same time.
Example 1
An application contains two independent claims and one dependent claim:
1.
A device comprising feature A.
2.
A device comprising feature B.
3.
A device comprising features A and B.
In this example, independent claims 1 and 2 are not linked by a single general inventive concept; features A and B are neither the same nor corresponding special technical features. A lack of unity is present between claims 1 and 2, each of them being directed to a different invention. The content of dependent claim 3 has no bearing on this analysis.
If dependent claims comprise features of two or more groups of inventions, then they belong to each of these group of inventions. In example 1, the subject-matter of claim 3 contains features of each of the two inventions (claim 1, claim 2), thus belonging to both inventions at the same time. Therefore, the search for the first invention mentioned in the claims should, in this example, cover the subject-matter of claim 1 and claim 3.
The examiner also assesses if a further search fee should be paid for the second invention (see F‑V, 2.2, F‑V, 3.4, B‑VII, B‑III, 3.8).
Example 2
An application comprises the following claims:
1.
A device comprising feature A.
2.
A device according to claim 1, further comprising feature B.
3.
A device according to any of the previous claims, further comprising feature C.
Claim 3 is thus directed to the following subject-matter:
3.
A device that is either:
(a)
a device comprising features A and C; or
(b)
a device comprising features A, B and C.
In this example, feature A is not a special technical feature (i.e. the subject-matter of claim 1 is either not new or not inventive).
–
If both features B and C are special technical features (new and inventive) and they are corresponding (that is, they have a technical relationship with each other), then the claimed devices A+B and A+C are the same invention. Consequently, the device A+B+C is part of the same invention as well. There is unity of invention.
–
If features B and C are different and are not corresponding (that is, they have no technical relationship with each other), then there is a lack of unity. There are two inventions: the device having the features A+B (claim 1 partially and claim 2 entirely) and the device having the features A+C (claim 1 partially and claim 3(a) entirely). The subject-matter of claim 3(b) has all the features of the first invention (A+B) and all the features of the second invention (A+C). Therefore it belongs entirely to both inventions at the same time. Therefore the search for the first invention mentioned in the claims should, in this example, cover not only claim 2 (A+B), but also the subject-matter of claim 3(b) (A+B+C).
The examiner also assesses if a further search fee should be paid for the second invention (see F‑V, 2.2, F‑V, 3.4, B‑VII, B‑III, 3.8).
3.2.5 Markush grouping (alternatives in a single claim)
Where a single claim defines several (chemical or non-chemical) alternatives, e.g. it contains a so called “Markush grouping”, the requirement of Rule 44(1) for same or corresponding special technical features is considered met if the alternatives are of a similar nature (see F‑IV, 3.7).
When the Markush grouping is for alternatives of chemical compounds, they should be regarded as being of a similar nature where:
(i)
all alternatives have a common property or activity, and
(ii)
a common structure is present, i.e. a significant structural element is shared by all of the alternatives, or all alternatives belong to a recognised class of chemical compounds in the art to which the invention pertains.
Thus, common matter is provided for a Markush grouping by the common property or activity of the alternatives (see (i) above) and the common structure defined by (ii) above.
A “significant structural element is shared by all of the alternatives” if the compounds share a common chemical structure that occupies a large portion of their structures, or, if the compounds have in common only a small portion of their structures, the commonly shared structure constitutes a structurally distinctive portion and this structure or portion leads to a technical contribution in view of existing prior art at hand. The structural element may be a single component or a combination of individual components linked together.
There is no need for a significant structural element to be novel in absolute terms (i.e. novel per se). Rather, the term “significant” means that in relation to the common property or activity, there must be a common part of the chemical structure that distinguishes the claimed compounds from any known compounds having the same property or activity.
In other words, the significant structural element defines the technical contribution which the claimed invention, considered as a whole, makes over the prior art at hand.
The alternatives belong to a “recognised class of chemical compounds” if there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention, i.e. that each member could be substituted one for the other, with the expectation that the same intended result would be achieved.
However, if it can be shown that at least one Markush alternative is not novel, unity of invention must be reconsidered. In particular, if the structure of at least one of the compounds covered by a Markush claim is known, together with the property or technical effect under consideration, this is an indication of lack of unity of the remaining compounds (alternatives).
This is because the Markush alternatives comprise no same (c.f. common structure) or corresponding (c.f. same property or technical effect) technical features that are “special”.
Claims covering different alternative nucleic acids or proteins defined by different sequences are equally considered to represent a Markush grouping and are also analysed according to the foregoing principles.
3.2.6 Claims for a known substance for a number of distinct medical uses
For the particular case of claims for a known substance for a number of distinct medical uses, see G‑VI, 7.1.
3.2.7 Intermediate and final products
In the present context of intermediate and final products, the term “intermediate” is intended to mean intermediate or starting products. Such products are made available with a view to obtaining end products through a physical or chemical change in which the intermediate product loses its identity.
The requirement for the same or corresponding special technical features (Rule 44(1)) is considered to be met in the context of intermediate and final products where:
(i)
the intermediate and final products have the same essential structural element, i.e. their basic chemical structures are the same or their chemical structures are technically closely interrelated, the intermediate incorporating an essential structural element into the final product, and
(ii)
the intermediate and final products are technically interrelated, i.e. the final product is manufactured directly from the intermediate or is separated from it by a small number of intermediates all containing the same essential structural element.
An essential structural element is a chemical structure that defines the technical contribution that the claimed inventions, considered as a whole, make over the prior art. Typically, the above-mentioned conditions are met in the case of a precursor compound yielding the final product directly upon reaction.
Unity of invention may also be present between intermediate and final products of which the structures are not known – for example, as between an intermediate having a known structure and a final product with unknown structure or as between an intermediate of unknown structure and a final product of unknown structure. In such cases, there should be sufficient evidence to lead one to conclude that the intermediate and final products are technically closely interrelated as, for example, when the intermediate contains the same essential element as the final product or incorporates an essential element into the final product.
Different intermediate products used in different processes for the preparation of the final product may be claimed provided that they have the same essential structural element. The intermediate and final products should not be separated, in the process leading from one to the other, by an intermediate which is not new. Where different intermediates for different structural parts of the final product are claimed, unity should not be regarded as being present between the intermediates. If the intermediate and final products are families of compounds, each intermediate compound should correspond to a compound claimed in the family of the final products. However, some of the final products may have no corresponding compound in the family of the intermediate products, so the two families need not be absolutely congruent.
The mere fact that, besides the ability to be used to produce final products, the intermediates also exhibit other possible effects or activities should not prejudice unity of invention.
