6.1.4.3 Combinations of Different Categories of Claims

Also in this Chapter:

• 6.1.4.1 Unity of Invention Background
• 6.1.4.2 Determining Lack of Unity
• 6.1.4.4 Markush Practice
• 6.1.4.5 Intermediate and Final Products in Chemical Applications
• 6.1.4.6 Biotechnological Inventions
• 6.1.4.7 Single General Inventive Concept
• 6.1.4.8 A Priori and A Posteriori Lack of Unity
• 6.1.4.9 Issuing the Invitation to Pay Additional Search Fees
• 6.1.4.10 Unsupported Unclear Long
• 6.1.4.11 Payment of Additional Search Fees Under Protest
• 6.1.4.12 Completing the Search Report
• 6.1.4.13 Time for Completing the Search Report
• 6.1.4.14 Reported Decisions -Unity
• 6.1.4.15 Other Decisions on Unity from the EPO

Key Legislation:

PCT ISPE Guidelines:

• Chapter 10 Unity of Invention
  • para 10.12
  • para 10.21-10.27
  • para 10.35-10.36
  • para 10.38-10.40
  • para 10.41-10.42
  • para 10.43
  • para 10.44
  • para 10.51
  • para 10.59D

Paragraph 10.12 of the PCT International Search and Preliminary Examination Guidelines sets out certain combinations of claims of different categories that are permissible in the same international application as having unity of invention. For example, independent claims to a product, a process specially adapted for the manufacture of the product and a use of the product are allowed.

A process is specially adapted for the manufacture of a product if it inherently results in the product. An apparatus or means is specifically designed for carrying out a process if its contribution over the prior art corresponds to that of the process.

Examples 1 to 3, 15 to 16, 18 to 19, and 23 in paragraphs 10.21 to 10.23, 10.35 to 10.36, 10.38 to 10.39 and 10.43 of the PCT International Search and Preliminary Examination Guidelines relate to claims of different categories while examples 4 to 7, 17, 20 to 22, 24, 31 and 43 in paragraphs 10.24 to 10.27, 10.37, 10.40 to 10.42, 10.44, 10.51, and 10.59D deal with claims of the same category.

In applying the guidelines specially adapted and specifically designed are not to be interpreted as requiring that the scope of the subject matter of claims of different categories be coextensive.  For example, for claims directed to a process and an apparatus "specifically designed" to carry out that process, it is permissible for the apparatus to be also capable of being used for carrying out another process and that the process could also be carried out using an alternative apparatus.