6.1.4.14 Reported Decisions on Unity

Date Published

The following reported decisions from the European Patent Office (EPO) may offer some guidance when considering issues of unity of invention or in explanations needed in an invitation to pay additional search fees:

Copolycarbonates/BAYER  OJ EPO 8/1982, 306

No lack of unity where new chemical end products, processes for their preparation, and new intermediates for these end products are technically interconnected and are integrated into a single overall inventive concept by being oriented toward the end products.

Benzyl Esters/BAYER  OJ EPO 7/1983, 274

No lack of unity between new low-molecular end products and new low-molecular intermediates if the groups of intermediates prepared and orientated toward the end products are technically closely inter-connected with the end products by the incorporation of an essential structural element into the end products.

Insulating Powder/MINNESOTA  OJ EPO 6/1988, 211;  [1988] 5 EPOR 329

Unity between a claim to a mixture, and a claim to one essential component of that mixture or a narrowly defined version thereof.

Caterpillar Tractor Co v Comm Pats  231 USPQ 591

Interpretation of (former) PCT Rule 13.2(ii) and "specifically designed".  Relevant now to paragraph 10.12 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/12) at 6.9 PCT Articles, Regs and Guidelines et al.

Heat Exchanger/SCHICK  OJ EPO 2/1987, 63;  [1994] EPOR 437

Not sufficient for the invitation to list the inventions contained in the claims if the applicant cannot infer from the list alone that the application does not relate to a single inventive concept.

Lithium Salts/MUCKTER  OJ EPO 2/1987, 67;  [1987] EPOR 176

Invitation is not legally effective unless reasons are given to substantiate lack of unity.

Thromboxane Antagonists/NRDC  OJ EPO 10/1987, 459;  [1988] 1 EPOR 34

Reasons must be communicated to the applicant in the invitation. It is not sufficient if reasons could be found in official files only.

Fuel Products/LUBRIZOL  OJ EPO 5/1988, 182;  [1988] 5 EPOR 327

Procedure where protest not filed at the ISA and additional fee not paid within time limits.

Fibre Fleece  OJ EPO 4/1993, 225;  [1993] EPOR 515

Listing a plurality of subject matters will be sufficient substantiation only in those exceptional cases where it is immediately clear from the list that the application does not relate to a single inventive concept. Where this is not the case, in order to be legally effective, an invitation must contain clear reasoning, based on the problem-solution approach, behind the finding that a technical connection or interaction does not exist. The problem set out in the description at issue was to improve a washing process in a simple way, and this was solved by adding a fibre fleece which acts as a dirt trap and/or as a means for measuring out detergent. The requirement of a single inventive concept was fulfilled.

Cervical Punch/WISAP  OJ EPO 4/1994, 239;  IIC Vol 25 No.6/1994, 906

Lack of unity a posteriori if the subject-matters of independent claims including their effects have no inventive common feature in the parts of the claims that differ from the closest prior art.

Teeth Whitening/UNILEVER  OJ EPO 12/1997, 552;  [1997] EPOR 502

The claims define a Markush grouping of organic peroxy acids. The unifying features between the alternatives in the compounds claimed are that they contain an organic peroxy acid functional group and have teeth whitening activity. A search revealed documents describing teeth whitening compositions comprising an organic peroxy acid belonging to the first group of compounds claimed. Hence, there are no special technical features linking the alternatives in the Markush claim and lack of unity was found a posteriori.

Artificial Hip Joint/DRAENERT  OJ EPO 8/1991, 438;  [1991] EPOR 516

In order to issue an invitation to pay an additional search fee on the basis of lack of unity, the search examiner must demonstrate that, given the general knowledge of the person skilled in the art (a priori) or the state of the art - as revealed by the search - relating to the subject-matter first defined in the claims (a posteriori), the substance of the single general inventive concept can evidently contribute nothing to the inventive step.

Where the inventive step is based chiefly on the discovery of an unrecognised problem, if the common problem, that is the effects to be achieved, was itself already known or could be recognised as generally desirable (a mere desideratum) or obvious, there would be no inventive merit in formulating the problem.

Also, if the common structural features are to be found only in the prior art portions of the claim (eg. as in two part form claims), and if these known features do not help to solve the problem of the combined whole, this may also indicate lack of unity.

Lack of unity was found in the application viewed either from the position of 'desired effects' or alternatively from considering the structural features of the independent claims.

Herbicides/HOECHST  OJ EPO 8/1993, 514;  [1994] EPOR 226

Lack of unity a posteriori found. Claim 1 included at least 13 completely independent groups or classes of compounds. The common aspects of these compounds, a compound A with other herbicides, was not new. The compounds did not possess a single general inventive concept. Also, the Protest Board had no reason to doubt the judgement of the ISA with regard to the further searches required and the number of additional fees needed.

Zeolite suspensions/HENKEL  OJ EPO 12/1994, 939;  [1995] EPOR 251.  (At IPE stage)

From the description the problem of stabilising aqueous suspensions using non-ionic surfactants was already known and had been solved many times. The asserted unifying link of a common inventive concept was thereby nullified. The claims proposed four further solutions to the problem which, because of the differences in structure between the proposed surfactant groups, are not based on a common principle. They were not based on the same general inventive concept. The Protest Board believed that in view of the technical link between three of the methods, which were connected by the close structural relation between the surfactants, these could be examined together for one fee.

Pigments/MERCK  OJ EPO 2/1996, 73;  [1996] EPOR 499 (At IPE stage)

From the disclosure in the application the term "matrix" in claim 1 is to be considered in the sense of a functional feature when compared to the prior art. Held that none of the documents cited described a matrix in the sense of the invention so clearly that the objection of lack of novelty could be raised without further explanation. An objection of lack of unity a posteriori required further explanation on the basis of a problem to be defined against the cited prior art and including the claimed solutions.

Percarbonate/NN  OJ EPO 4/2000, 186;  [2000] EPOR 515 (At IPE stage)

There were 4 independent claims to either a process for manufacturing sodium percarbonate (PCS) or to PCS characterised by certain properties. The Protest Board noted that a manufacturing process and its product may not be regarded as lacking unity simply by virtue of the fact that the process is not restricted to the manufacture of the claimed product. In referring to a previous decision, the Board also said that when comparing features in claims which may possibly lack unity or which are suspected of lacking unity, reference should be made to the description when investigating the effects to be attributed to the individual features of a claim. Only then can a decision be taken as to whether, on the basis of "corresponding" technical features, there is a technical relationship among the inventions. The Board was not convinced, given the explanation by the IPEA, that the claims lacked unity a posteriori.

Glossary

OJ EPO  - Official Journal of the European Patent Office

EPOR  - European Patent Office Reports

IIC  - International Review of Industrial Property and Copyright Law