To prevent abuse, the INPI requires that each patent application cover only one invention: this is the very concept of unity of invention.
Lack of Unity of Invention
Principle
Unity of invention is provided for under Article L612-4 IPC.
The patent application may relate to only one invention or to a plurality of inventions so linked as to form a single general inventive concept.
The purpose of this requirement is to enable efficient classification of inventions and to prevent the payment of a single search official fee from covering a search for 1,000 inventions.
This is quite understandable…
Assessment of Unity
Regarding the assessment of unity of invention, it should be noted that the INPI Examination Guidelines directly address this point in Section VI-A 3.
For the INPI, to verify that the unity of invention requirement is met, it is necessary to check for an effective technical link between the claims.
However, the INPI clearly provides no method for verifying the existence of this technical link (figure it out for yourself :)).
At most, the legislation (Article R612-19 IPC) provides some examples of what is acceptable in terms of unity of invention:
- A product, a process for manufacturing that product, and a use of that product;
- A process, an apparatus or means specifically designed for carrying out that process;
- A product, a process specifically designed for manufacturing that product, and an apparatus or means specifically designed for carrying out that process.
Worse still, the INPI Examination Guidelines confuse the prohibition of claims of the same category with the unity of invention requirement (spoiler alert: they are not the same, otherwise the legislator would not have begun Article R612-17-1 IPC with « without prejudice to the provisions of Article L612-4 IPC…« ).
In short…
Finally, to conclude, if you want a more reasonable approach, I invite you to read about unity of invention in Europe.
A Priori / A Posteriori
Good news, the INPI Examination Guidelines also address this point in Section VI-A 2.
A Priori
Lack of unity a priori is a lack of unity detectable without analyzing the validity of the claims in view of the prior art.
Thus, lack of unity a priori only appears between independent claims.
A Posteriori
Lack of unity a posteriori is a lack of unity detectable after analyzing the validity of the claims in view of the prior art.
Thus, if claim 1 is not novel (or inventive), and the dependent claims present non-unitary fall-back positions, an objection of lack of unity will be raised a posteriori (here, I am assuming based on European practice, as the INPI Examination Guidelines are very brief).
Consequence
Division
If an application lacks unity, it will be necessary to divide it to avoid a refusal (Article L612-12 IPC).
Given that these texts are drafted « poorly » (with all due respect, of course), let’s have some fun: what happens if you divide a non-unitary application (without paying the official fees, for example) but do not amend the claims of the non-unitary application (which thus remain non-unitary)?
Will you obtain a grant? In my opinion, Article L612-12 IPC does not allow for a refusal…
Deletion of certain claims
It would seem fairly logical that if we amend the application to remove the issue of unity of invention, the INPI will not bother us further…
While I largely agree in principle, the legal provisions appear to create significant uncertainty…
Indeed, Article L612-4 CPI is in the section « Filing of applications » rather than « Examination of applications ».
Thus, this unity requirement appears to be intrinsic to the time of filing. Furthermore, Article L612-12 CPI provides only one means of correction: division.
Colleagues have then pointed me to Article R612-48 CPI: this article provides for limitation of claims to avoid rejection.
Admittedly, this is textually provided for in Article R612-48 CPI, but the latter is a regulatory provision, whereas Article L612-12 CPI is of a higher hierarchical level.
As you will have gathered: this discussion is largely philosophical. In practice, if you amend your claims to make them unitary, you will not encounter any issues, right?
Prohibition of claims of the same type
Principle
In principle, it is impossible to file multiple independent claims of the same type (R612-17-1 CPI).
Exceptions
Nevertheless, the same Article R612-17-1 CPI provides for exceptions: this is possible if the subject matter of the application relates:
- to several products having a link between them,
- to different uses of a product or a device,
- to alternative solutions to a particular problem insofar as these alternatives cannot be appropriately covered by a single claim.
Sanction
Unless I am mistaken, this Article R612-17-1 CPI, although prescribing a strong prohibition, cannot form the basis for a rejection decision by the INPI.
Indeed, I find no legal basis for such a rejection.
It is true that the INPI Examination Guidelines conflate this concept with the concept of unity of invention (as mentioned previously). Consequently, it is highly likely that they rely on Article L612-4 CPI to justify a rejection.
This is not intellectually satisfying.