Unity of invention and category of claims

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Chapter 1. Unity of Invention Fault

Section 1.1. Principle

The purpose of this requirement is to efficiently classify inventions and prevent the payment of unique search fee does not provide a search for 1000 inventions (G1 / 91).

So, theA82 CBE provides:

The European patent application may relate to only one invention or to a plurality of related inventions so that they form only one general inventive concept.

This requirement must be respected from the filing of the application to the issue (T178 / 84).

Section 1.2. Opposition

TheA101 (3) EPC normally provides that a patent maintained in modified form must comply with the conditions of the EPC.

Nevertheless, the large room said (G1 / 91) that the requirement of unity of invention was not one of those "conditions".

Similarly, R43 (2) EPC does not apply to the opposition (T263 / 05).

Section 1.3. Appreciation of the unity of invention

The R44 (1) EPC and the FV Guidelines 2 propose a method to determine if there is unity of invention:

  • for each of the independent claims, identify the technical differences with the state of the art;
  • check that there is at least one difference (identical or corresponding) which is found in each of the independent claims;
  • if it is not the case, there is a problem of unity.
Algorithm for determining unity of invention
Algorithm for determining unity of invention Algorithm for determining unity of invention

The difference (called " special technical features" ) perhaps (FV Guidelines 2):

  • identical in each of the independent claims:
    • a transistor in two independent claims;
  • corresponding :

    • characteristics having the same technical effect, for example, for elasticity:

      • a metal spring,
      • a block of rubber.
    • characteristics with a mirrored technical effect, for example, for data exchange:

      • an emitter,
      • a receiver.

For claims of different categories, it is also necessary that the general inventive concept between the claims be the same (FV Guidelines 2).

It is also interesting to note that the EPO, pragmatically, does not encourage its Examiners to raise objections on this basis to "all-va" (FV Guidelines 4): this requirement must simply avoid filing a manifestly non-unitary application!

Section 1.4. Examples of unity

Case law and guidelines allow us to list a number of situations in which unity of invention will be respected:

  • claims onFV Guidelines 2):
    • a product,
    • a process specially adapted / capable of leading to manufacturing said product
      • the fact that the manufacturing process is not limited to the manufacture of the claimed product is not sufficient to destroy the unity of invention (FV Guidelines 2).
    • a use of this product;
  • claims onFV Guidelines 2):
    • a process,
    • a device or a means specially designed for the Implementation of this process;
      • the fact that the device can implement another method is not sufficient to destroy the unity of invention (FV Guidelines 2) but it is not sufficient to satisfy the unity of invention that the device is simply capable of being used for the implementation of the method.
      • the fact that the method can be implemented another device is not sufficient to destroy the unity of invention (FV Guidelines 2);
  • claims onFV Guidelines 2):
    • a product,
    • a process specially adapted to the manufacturing said product
    • a device or a means specially designed for the Implementation of this process;
  • claims onFV 2.2.2.4 Guidelines and T110 / 82, T470 / 91):
    • a product final,
    • product intermediate :
      • if it is essential for obtaining the final product through a transformation or
      • if the link with the final product is sufficiently close;
  • claims on variants (FV 2.2.2.1 Guidelines) of a similar nature (Markush Group, FV 2.2.2.2 Guidelines):
    • the variants must have a common feature or activity; and
    • the variants must have a common structure.
  • claims to use a product for several therapeutic methods new (G-VI Guidelines 7.1)
  • etc.

Section 1.5. Skill

The lack of unity must be raised as soon as possible, either by the Research Division or by the Examining Division.

Section 1.6. A priori / a posteriori

1.6.1. A priori

Non-unity a priori (FV 4.1 Guidelines) is a detectable non-unit without analyzing the validity of the claims with regard to the state of the art.

Thus, the non-unity a priori appears only between independent claims.

1.6.2. A posteriori

1) Principle

Non-unity a posteriori (FV 4.1 Guidelines, FV Guidelines 4 and FV Guidelines 5) is a detectable non-unit after having analyzed the validity of the claims with regard to the state of the art (G1 / 89).

Thus, if Claim 1 is not new (or inventive), and the dependent claims (FV Guidelines 5) have non-unitary fallback positions, a non-unity objection will be raised a posteriori.

2) Approach to be followed by the Examiner

For each group of invention, the Examiner must identify the special technical elements (The elements determining a contribution to the state of the art) and establish the respective technical problem solved compared to the cited prior art (T129 / 14).

If an invention group is considered to be fully anticipated by the cited documents, there can be no particular technical element Since nothing distinguishes this group from the prior art as indicated in R44 (1) EPC (T129 / 14) : so, the Examiner can not form a group with claims that he considers to be totally anticipated.

This is recalled by FV Guidelines 5 (If a group is not new and inventive, it can not have an inventive concept):

If, however, the independent claim does not appear to be patentable, it must be carefully considered whether there is still an inventive link between all the claims dependent on that claim.

Because inventive links can only exist between claims having a particular technical element The groups of invention indicated as non-unitary are necessarily new and inventive.

3) Documents A54 (3) EPC

The documents A54 (3) EPC born can not to be used for the appreciation of the unity of invention a posteriori (FV 4.1 Guidelines).

Thus, the Examiner must confine himself to the documents A54 (2) EPC to seek to destroy the novelty or inventive step of claims hats »(T1168 / 02 or T496 / 03).

Indeed, it seems that the intention of the EPO is to use the documents A54 (3) EPC that to avoid the double patentability and thus ensure the first applicant the only protection (G1 / 03).

Thus, any other use would be contrary to the spirit of the treaty.

However, and in order to be exhaustive, we must also point out a decision that seems to go in the opposite direction: T0525 / 03 (see point 5.2, remembering that document D1 is a document A54 (3) EPC).

Section 1.7. Consequences

1.7.1. At the research stage

As stated in the article Types of research ", The Research Division prepares a search report for the first invention mentioned in the claims (R64 (1) EPC) : We are talking about partial research report.

This partial report is not published even though it is accessible to public inspection (A128 (4) EPC) after the publication of the application (BX Guidelines 1).

A notification is then made to the applicant to let him 2 months to request, if desired, additional research on inventions that have not been searched for (R64 (1) EPC).

This notification must include the reasons why the Examiner considers that there is no unity: failing that, this notification has no legal effect (W7 / 86).

Of course, a new search fee will have to be paid (A2 (1) .2 RRT, 885 € if application filed before July 1, 2005, 1300 € otherwise) for each invention: these must be paid within the same period. In exceptional cases (eg research can be done on all inventions without special effort), no new taxes will be required (Directives B-VII 2.2) and the search will be completed completely.

A priori (W1 / 97), the search division (acting as an ISA or not) can only once ask the applicant to pay additional fees for a new search: his first analysis must therefore be as accurate as possible.

No rejection of the application or claim for limitation of claims is possible at this stage (FV Guidelines 6).

1.7.2. At the examination stage

1) Challenging the opinion of the Research Division

The Examining Division must always examine the question of the unity of invention even if the division of the search has not objected (T631 / 97, FV 7.1 Guidelines).

In any case, it is possible to ask the Examining Division to reconsider the opinion of the Research Division concerning non-unity and to refund the additional search fees (FV 7.3 Guidelines, although in practice this is likely to succeed, the Examiner being the same in both situations).

The decision of the examining division may be appealed against the final decision (eg rejection). This appeal must be based solely on the reasons given by the Research Division (T188 / 00).

If the applicant has not paid a fee, he or she is deemed to have agreed to have the review deal with the application that was the subject of the research (G2 / 92, T631 / 97, Guidelines C-III 3.1.1).

Nevertheless, if the Examiner thinks, after considering the question, that the invention was in fact unitary, additional research is carried out by the Examining Division (Guidelines C-III 3.1.1).

2) Choice of the invention

If several inventions have been sought, the applicant is invited at the beginning of the examination to choose the invention to be examined and to limit the application accordingly (Guidelines C-III 3.1.2).

This election is irrevocable and if the plaintiff modifies the claims to have them transferred to another object, this amendment will be rejected :

  • under the R137 (3) EPC (if the object was searched but not chosen) or
  • under the R137 (5) EPC (if the object has not been searched for and does not form the same inventive concept with the sought invention).

It may be necessary to modify parts of the description and drawings (R42 (1) (c) EPC, R42 (1) (d) EPCpresentation of the invention and R48 (1) (c) EPC foreign or superfluous elements).

It is possible to file divisional applications for deleted parts.

If the applicant refuses to limit, the application will be rejected (A82 CBE, Directives H-II 7.3).

3) Non-unit raised during examination

Moreover, the lack of unity may appear during the examination (new document, defective posterior unit, etc.) and therefore it is useful for the Examination division to be able to raise it.

Once the objection has been raised by the Examining Division, the applicant must be invited to submit comments or to amend his claims in order to continue the examination with a single invention (A94 (3) EPC together R71 (1) EPC).

1.7.3. On divisional

As stated in the article on divisional applications, the first objection of non-unity of invention made by the Examining Division opens a period of 2 years to file a divisional application (see R36 (1) (b) EPC).

If the applicant has filed a divisional application for an invention for which an additional search has been requested, the search fee for the divisional application will be refunded in whole or in part (A9 (2) RRT).

1.7.4. On the modifications of the claims

When a lack of unity is raised by the division of research, all inventions are not sought.

If, subsequently, the request is limited to an unseen or unselected element, the application may be rejected:

  • under theA82 CBE ;
  • under the R137 (3) EPC (if the object was searched but not chosen) or
  • under the R137 (5) EPC (if the object has not been searched for and does not form the same inventive concept with the sought invention).

In the framework of the PCT

1) At the level of the EPO / ISA

An additional fee is provided by the R158 (1) EPC (and authorized by A17.3.a PCT, 1775 € for PCT requests, A2 (1) .2 RRT)

It must be paid for each other invention to be the subject of an international search.

In the PCT procedure, if we do not share the ISA's opinion on the unity of invention, we must pay the additional fees " with reservations By attaching a reasoned statement to the effect that the PCT application meets the requirement of unity of invention (R40.2.c PCT).

This reserve charge is provided for by R158 (3) EPC (875 €, A2 (1) .21 RRT).

If this reserve is paid, a review procedure is carried out to verify whether there is indeed a problem of unity (see " Decision of the President of the European Patent Office dated 24 March 2010 instituting review proceedings for the implementation of the PCT reservation and review procedures », OG 2010, 320).

If no problem is finally found, the protest fee is refunded (R40.2.e PCT).

2) At the level of the EPO / IPEA

It is possible to request an international preliminary examination on several sought-after inventions.

An examination fee is provided by the R158 (2) EPC (and authorized by A34.3.a PCT, 1830 €, A2 (1) .19 RRT).

In the PCT procedure, if one does not share the ISA's opinion on the unity of invention, the additional examination fees must be paid " with reservations By attaching a reasoned statement to the effect that the PCT application meets the requirement of unity of invention (R40.2.c PCT).

This reserve charge is provided for by R158 (3) EPC (875 €, A2 (1) .21 RRT).

If this reserve is paid, a review procedure is carried out to verify whether there is indeed a problem of unity (see " Decision of the President of the European Patent Office dated 24 March 2010 instituting review proceedings for the implementation of the PCT reservation and review procedures », OG 2010, 320).

If no problem is finally found, the protest fee is refunded (R40.2.e PCT).

1.7.5. As part of a Euro-PCT application

1) Where a further search is to be carried out by the EPO

If the EPO considers that there is no unity of invention, the supplementary search report is only established for the first invention (Partial Supplementary Search Report, R164 (1) (a) EPC).

This partial supplementary research report is not accompanied by a written opinion (" Notice from the European Patent Office dated 10 June 2014 concerning the amendment of Rules 164 and 135 EPC », OY 2014, A70point 8).

Since November 1, 2014 (" Governing Body decision of 16 October 2013 amending Rules 135 and 164 of the Regulations under the European Patent Convention », OG 2013, 503), a notification is sent to the applicant asking whether he wishes, in the 2 months from the notification, pay a supplementary search fee for each invention not sought (R164 (1) (b) EPC).

This period is excluded from the continuation of the procedure (R135 (2) EPC) and only restitutio in integrum of the'A122 EPC is applicable.

A complementary search report (covering all inventions for which a fee has been paid) is then established accordingly (R164 (1) (c) EPC) with a written opinion.

2) Where the EPO has waived further research

If the EPO has refrained from conducting a supplementary search, but the claimed invention at the time of entry into phase has not been searched, the EPO notifies the applicant to pay a fee. additional search fee within a period of 2 months (R164 (2) (a) EPC).

This period is excluded from the continuation of the procedure (R135 (2) EPC) and only restitutio in integrum of the'A122 EPC is applicable.

The results of this research will be communicated to the applicant in a notification A94 (3) EPC or a notification R71 (3) EPC (R164 (2) (b) EPC). This notification also gives the applicant time to take a position on the conclusions of the examining division and the attached search results, as well as to modify the description, claims and drawings on his own initiative (" Notice from the European Patent Office dated 10 June 2014 concerning the amendment of Rules 164 and 135 EPC », OY 2014, A70point 16).

This additional search will not include a written opinion (R164 (4) EPC together R62 EPC).

Where appropriate, the EPO will also invite the applicant to limit the application to an invention among the inventions sought (either at the international stage or at the stage of the complementary search, R164 (2) (c) EPC and R164 (3) EPC together R62bis EPC).

Chapter 2. Prohibition of claims of the same class

This prohibition has no connection with the unity of invention: it is simply complementary to it.

Section 2.1. The principle

The R43 (2) EPC outlawing, as a matter of principle, having more than one independent claim of the same class (product, process, device or use) in an application.

Nevertheless, like any principle, there are a number of exceptions.

There is also a " Notice dated 9 January 2002 concerning the amendment of Rules 25 (1), 29 (2) and 51 EPC », OJ 2002, 112 on this topic.

This prohibition applies during the grant procedure, but not during the opposition proceedings (analogy with G1 / 91).

Section 2.2. Exceptions

2.2.1. Link between two products

As the R43 (2) (a) EPCif two products are related, then this prohibition does not apply.

We speak of "link" and not of "technical relations" as in the R44 EPC : a link is a priori less restrictive.

This exception can be illustrated with the following examples:

  • a transmitter and a receiver
  • a socket-plug.

However, formally, a link between two processes should not be accepted: there must be a link between two products.

However, in a pragmatic waythe EPO also (most often) accepts two related processes (typically a transmission method and a reception method).

2.2.2. Different uses of a product or device

For example, it is possible to claim (R43 (2) (b) EPC):

  • a medicine to treat colds, and
  • the same medicine to treat prostate cancer in the same application.

2.2.3. Alternative solutions to the same problem

This exception only applies if it is impossible to create a common cap for these two alternatives (R43 (2) (c) EPC).

This can happen in particular when there are two methods of manufacturing the same chemical in an invention for a new compound group.

Section 2.3. Sanction

2.3.1. At the research stage

If this irregularity is raised during the search stage, the EPO invites the applicant to indicate within a 2 months the claims conform to R43 (2) EPC which should be the subject of the research (R62bis (1) EPC).

TheA121 EPC is not applicable to this period.

Note that if all claims of the same type have been deemed abandoned due to non-payment of claim fees, this notification will not be sent (Guidelines B-VIII 4.4).

If the applicant does not answer, the search is performed on the first claim in each category (R62bis (1) EPC).

The applicant can, of course, challenge the opinion of the Research Division, prioritizing certain claims in the event of disagreement with the Examiner (eg claims 10 and 15 but no search on claim 1, Guidelines B-VIII 4.2.2).

Of course, to do this, it will be necessary that claims fees have been paid for priority claims ... otherwise this prioritization will be ignored (Guidelines B-VIII 4.4).

The RREE will identify the claims that have been the subject of the search and will invite the applicant to limit his claim (Guidelines B-VIII 4.3).

2.3.2. At the examination stage

The Examining Division then invites the applicant to limit his application (R62bis (2) EPC) unless it finds that the objections were not justified (in this case, a new search is performed).

This limitation may consist of a suppression of the undesired claims or by making these claims dependent (subject to theA123 (2) EPC, H-II Guidelines 5).

An objection at the examination stage may very well be made even if the research division has not raised an objection (F-IV Guidelines 3.3).

If the applicant does not do anything, the application may be rejected (A97 (2) EPC), but the applicant must be given sufficient opportunity to express himself before any rejection (F-IV Guidelines 3.3).

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