6.1.4.14 Reported Decisions on Unity

Date Published

Glossary

  • OJ EPO: Official Journal of the European Patent Office

  • EPOR: European Patent Office Reports

  • IIC: International Review of Industrial Property and Copyright Law

  • IPE: International Preliminary Examination

Reported decisions

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, T 57/82, OJ EPO 1982, 306

No lack of unity was found for where new chemical end products, processes for their preparation, and new intermediates for these end products are:

  • Technically interconnected

  • Integrated into a single overall inventive concept by being oriented toward the end products

Benzyl Esters/BAYER, T 110/82, OJ EPO 1983, 274

Unity exists 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 interconnected. This is achieved with the end products by the incorporation of an essential structural element into the end products.

Insulating Powder/MINNESOTA, W 07/85, OJ EPO 1988, 211; [1988] 5 EPOR 329

Unity exists 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 6.8 PCT Articles, Regs and Guidelines et al.

Heat Exchanger/SCHICK, W 04/85, OJ EPO 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, W 07/86, OJ EPO 1987, 67; [1987] EPOR 176

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

Thromboxane Antagonists/NRDC, W 09/86, OJ EPO 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, W 1/87, OJ EPO 1988, 182; [1988] 5 EPOR 327

Procedure where protest not filed at the International Search Authority (ISA) and additional fee not paid within time limits.

Fibre Fleece OJ, W 11/89, EPO 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, which 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, W 32/92, OJ EPO 1994, 239; IIC Vol 25 No.6/1994, 906

Lack of unity a posteriori exists 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, W 4/96, OJ EPO 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, W 6/90, OJ EPO 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 the substance of the single general inventive concept can evidently contribute nothing to the inventive step. This is with consideration of either:

  • The general knowledge of the person skilled in the art (a priori)

  • The state of the art as revealed by the search relating to the subject-matter first defined in the claims (a posteriori)

Where the inventive step is based chiefly on the discovery of an unrecognised problem, there would be no inventive merit in formulating the problem if the effects to be achieved (the ‘common problem’) are themselves either:

  • already known

  • could be recognised as either generally desirable (a mere desideratum) or obvious

Furthermore, lack of unity may be present if the common structural features both:

  • Are to be found only in the prior art portions of the claim (e.g. as in two-part form claims)

  • If these known features do not help to solve the problem of the combined whole

As a result, 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, W 15/91, OJ EPO 1993, 514; [1994] EPOR 226

Lack of unity a posteriori was 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 and therefore compounds did not possess a single general inventive concept.

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, W 4/93, OJ EPO 1994, 939; [1995] EPOR 251 (At IPE stage)

The description disclosed that 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 4 further solutions to the problem with differences in structure between the proposed surfactant groups. It followed that these solutions were not based on a common principle and were not based on the same general inventive concept.

However, 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, W 4/94, OJ EPO 1996, 73; [1996] EPOR 499 (At IPE stage)

From the disclosure in the application, the term ‘matrix’ in claim 1 was to be considered in the sense of a functional feature when compared to the prior art. It was 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, W 11/99, OJ EPO 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 on the basis of ‘corresponding’ technical features as to whether there is a technical relationship among the inventions.

Accordingly, the Board was not convinced that the claims lacked unity a posteriori, given the explanation by the IPEA.

Amended Reasons

Amended Reason Date Amended

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