6.1.4.15 Other Decisions from the EPO

Also in this Chapter:

• 6.1.4.1 Unity of Invention Background

• 6.1.4.2 Determining Lack of Unity

• 6.1.4.3 Combinations of Different Categories of Claims

• 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 and/or Complex Claim Sets

• 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 on Unity

On this Page

• Viewing assembly – Case W0038/90

• Chlorination process – Case W0009/93

• Additional guidance

Viewing Assembly – Case W0038/90

The Protest Board found that three independent claims represented three concepts to overcome three distinct problems with the prior art given in the specification. The concepts had nothing in common and so the claims referred to different specific technical features without any relationship with respect to each other. Therefore, there was no single general concept linking the different inventions.

The Board noted that a sole common link between the claims was that the respective features all contribute to the realisation of the same device (a viewing assembly for a door). However, they stated the following:

‘[this] common pre-characterising feature is confined to indicate the designation of the invention, as part of the prior art; it is not, however, a specific feature interacting with the remaining characterising features and thereby contributing to the various inventions and their effects.’

It followed they rejected this sole link as irrelevant for possible inventive contribution over the prior art and concluded a lack of unity a priori.

Chlorination process – Case W0009/93

The problem to be solved by the processes of Claims 1 to 18 was to improve a known chlorination process. By contrast, claim 19 was directed to compounds intended to solve the different technical problem of providing monomers or intermediates therefor. The intermediate compounds produced according to claims 1 to 9 were known from a US Patent and the second reaction step in claims 10 to 18 was also established in the art. 

The Protest Board noted that because the reaction step was part of the prior art, there was no link between a) the contributions over the prior art made by the process of claims 1 to 9, and b) the compounds of claim 19. The Board also noted the group of inventions did not relate to a common technical problem or to one single technical concept behind solutions to different problems. Therefore, there was a lack of unity a posteriori.

Additional Guidance

Further guidance on unity of invention issues may be gained by reference to the Case Law of the Boards of Appeal of the EPO which can be found at their website, which can be accessed through the Examiners’ workbench.