Where a novelty objection is taken, examiners need not consider lack of inventive step separately against that claim, since in most cases it can be assumed that claims which are not novel also lack inventive step. However, the novelty objection should also include a statement that the claims are not inventive (see, for example, PERP codes [F1] to [F3]).

Discussion of Independent and Dependent Claims

Sufficient discussion of independent claims should be provided to support the grounds of objection for such claims. Where there are multiple independent claims with similar or slightly different features, and where similar amendments to all the independent claims will overcome objection(s) raised, examiners may discuss the issues broadly, e.g. in a single objection (see “Addressing Similar Issues Under Multiple Grounds” below). It is acceptable for dependent claims to be grouped with their corresponding independent claims and generalised statements made about those claims.

Detailed discussion on dependent claims should be provided if examiners are able to determine that a particular feature or combination of features in those claims is related to the inventive concept and therefore likely to be promoted to an independent claim at a subsequent stage.

Additional discussion on the interpretation of terms should be provided where there is doubt as to the correspondence between features in a claim and a citation. These differences should be discussed to the extent required to impart clarity to the objection. The objection needs to clearly explain how the claims are being interpreted for the purposes of the report.

However, discussion of dependent claim features that are not related to the inventive concept and are therefore unlikely to be promoted to the independent claims should be minimised. Where dependent claims add features that are prima facie trivial or generally well known in that art, they can be logically grouped under the relevant independent claims and dealt with in a more general manner. When objecting in a general manner to dependent claims, examiners must identify at least some of the features defined in those claims and indicate whether these features lack novelty, or lack an inventive step using, for example, arguments of design choice and common general knowledge. It is also not sufficient to simply state that the features added by the dependent claims are either disclosed or not inventive and in this regard, the text of PERP code [F750A] is acceptable. Further examples of suitable wording are provided in PERP codes [F750B] and [F751] – [F755].

Note: In determining those documents to cite for novelty/inventive step objections, and the discussion of those documents, the principles outlined in 5.6.4.6 Identifying and raising citations, 3.3.1 Referencing multiple FERs and 6.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability (Discussion of Citations Against the Criteria) should be considered.

For complex cases it may not be practical to provide an opinion on every claim (see also 6.1.4.10 Unsupported, Unclear, Long and/or Complex Claim Sets with Clear Lack of Unity).

‘Whole of Contents’ Novelty

In the case of ‘whole of contents’ novelty objections based on P, X or E documents, examiners are to identify in the report those claims that are not novel (both independent and dependent). Claims lacking novelty should be discussed as outlined above, i.e. independent claims should be discussed in detail, however detailed discussion of dependent claim features that are not related to the inventive concept should be minimised.

Combining Novelty and Inventive Step Objections

Novelty and inventive step objections do not necessarily have to be raised as separately numbered objections in a report. There are many instances where combining objections is more logical and provides a better focus on the key deficiencies in an application. In general, where a citation is used for both novelty and inventive step purposes, it is logical to combine the two objections. In this situation a single objection will generally allow the applicant to focus on the key issues of invalidity. Another example is where the features of dependent claims are not related to the inventive concept, as discussed above.

However, there are also cases where distinct issues of novelty and inventive step in an independent claim may be better addressed separately. An example would be where there are different options within the one claim – one option being not novel and the other not inventive. In such cases, it may be more logical to separate the issues of novelty and inventive step.

Patentability Issues Including Patentable Subject Matter (Manner of Manufacture)

Sufficient detail should be provided to support an objection relating to patentability issues. In the case of manner of manufacture (patentable subject matter), examiners should be mindful that certain words, such as system or combination, often require careful analysis and, if given a particular interpretation, this should be explained in the objection. For business methods and computer software related applications, issues relating to combinations of technical features in a claim which are merely the use of well known and well understood technology for its usual purpose, need to be clearly explained.

Clear Enough and Complete Enough Disclosure

In assessing whether a specification discloses the invention in a clear enough and complete enough manner, examiners need to firstly determine the scope of the invention as claimed and then decide whether the complete specification provides an enabling disclosure of all the things that fall within the scope of the claims.

An objection on the grounds that the specification does not disclose the invention in a clear enough and complete enough manner should focus on the disclosure of the specification as a whole, including references to parts therein, to make the issue clear.

Support

Examiners should assess whether the claims are properly supported by the matter disclosed in the body of the specification.

An objection that the claims are not supported should clearly identify the relevant claims and those features which give rise to the objection. Where an independent claim is considered to lack support, it will usually be sufficient to merely include a general statement referring to dependent claims which also lack support.

Clarity

While all claims must be clear and definite in scope, the dependent claims do not merit the same careful analysis and criticism as the independent claim(s). The level of attention paid to dependent claims is a matter of judgement on the part of examiners. As a general rule, dependent claims adding core features or characteristics, but not claimed in the independent claim(s), should be looked at more closely than those dependent claims adding clearly preferred features or characteristics.

Where a claim is considered to lack clarity, it is not sufficient to merely object that the claim is not clear. The objection will generally need to explain the problems with the meaning of words or phrases, or with determining the scope of the claim.

Lack of Unity

An objection that the claim or claims of a complete specification do not "relate to one invention only" should only be taken where there are claimed inventions that are clearly not so linked as to form a single inventive concept. The objection is applicable only when more than one invention is claimed. It is not relevant for the purposes of sec 40 that the complete specification describes, but does not claim, more than one invention. Examiners are expected to exercise their judgement and take a pragmatic approach when deciding how to proceed in view of a lack of unity.

The report should include a fully reasoned explanation of the consideration behind the finding of lack of unity - it is not sufficient to merely list the different inventions claimed. For example, if lack of unity is raised a posteriori, the explanation must include reference to the relevant citations. The level of detail required is shown in 6.3.10 Annex F - Invitation to Restrict/Pay Additional Fees - Unity.

Note: Where a claim contains embodiments directed to different identified inventions, the lack of unity objection should reflect this, for example:

Invention 1. Claims 1-20 and 21 (in part) relate to compounds of formula 1, a process for their preparation, pharmaceutical compositions containing them and methods for their use as antibiotics.

Invention 2. Claims 21 (in part) and 22-29 relate to compounds of formula 2, pharmaceutical compositions containing them and methods for their use as anti-inflammatories.

In some cases, where inventions are closely related, even though there is a technical lack of unity, it will require only negligible additional effort to carry out examination on the additional inventions. This may occur where, for example, the prior art to be considered for each invention is similar, or where earlier search results or FERs are available and at least some of the additional inventions have been searched or examined. In assessing whether or not the effort required to examine the additional invention(s) is “negligible”, examiners should have regard to the time likely to be required to draft and perform any additional search, consider documents found, assess any other issues (e.g. sec 40) relating to the claims in question and the estimated time to complete any further reports. This is to be weighed against the time required to formulate and maintain as appropriate the corresponding objection to lack of unity.

Having weighed these factors, where expeditious to do so, examination is to be carried out in relation to those inventions that can be accommodated with negligible additional effort.

Where there is lack of unity and the examiner becomes aware of prior art related to inventions upon which examination is not being carried out (whether or not as a result of a "partial" search or examination), this information may be included in the report, depending on its level of relevance.

Further direction on the basis of lack of unity objections is provided at 5.6.3.2 Claims directed to a single invention (Unity). Examiners should also refer to 4.4.2.4 Reserving the Search for discussion of the issues associated with conducting a partial search and the citation of documents arising from such a search. Information concerning adopting unity objections from FERs see 3.3.1 FERs and Lack of Unity.

Reserving Opinion

Where, as a result of a lack of unity objection, only certain inventions are examined, this must be clearly indicated in the report, together with a statement that opinion in respect of those inventions not examined is reserved.

Furthermore, where a claim encompasses embodiments directed to more than one of the identified inventions and opinion has been reserved in respect of at least one of these, the lack of unity objection should indicate that part of the claim concerned has been examined, while part has been reserved. For example:

“I have limited the search and report to Invention 1 as defined by Claims 1-20, 21 (in part).

When I receive a response to my objections I may extend the search area and expand the report on the basis of my findings.”

Addressing Similar Issues Under Multiple Grounds

In determining how to address report writing where similar issues arise under multiple grounds, examiners should strategically consider whether to focus on a particular objection as being the primary source of the issues. Where a single detailed objection is taken, examiners must also highlight to the applicant that other issues are applicable. Providing this additional commentary may assist the applicant with formulating a response that deals with these background issues and avoids potential objections on the issues identified in the commentary. Examples include:

The claims are overly broad, so support and novelty/inventive step objections are equally applicable. Raising a detailed novelty/inventive step objection with strong citations will likely result in the claims being narrowed, overcoming both issues. General reference can be made to the support issue;

Manner of Manufacture and novelty/inventive step are applicable - if the claims are plainly not novel or inventive and the claimed invention is within the realm of patentable subject matter, a strong novelty/inventive step objection will likely resolve the MoM issue. Alternatively, a support objection might be applicable and can be used to guide the applicant towards incorporating patentable subject matter. If it is not obvious how the applicant might amend to introduce patentable subject matter, it may be appropriate to focus on the manner of manufacture objection – choosing to reserve a search or otherwise rely on a FER for novelty/inventive step. Again, brief reference should be made to all grounds relevant while focusing in detail on the key ground.

Amended Reasons

Amended Reason	Date Amended
	30 May 2024

3.3.2.1 Level of Detail in the Report

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Novelty