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 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

• 6.1.4.15 Other Decisions on Unity from the EPO

Key Legislation:

PCT ISPE Guidelines:

• Chapter 10 Unity of Invention

  • Paragraph 10.12

  • Paragraphs 10.21 – 10.27

  • Paragraphs 10.35 – 10.36

  • Paragraphs 10.38 – 10.40

  • Paragraphs 10.41 – 10.42

  • Paragraph 10.43

  • Paragraph 10.44

  • Paragraph 10.51

  • Paragraph 10.59D

On this page

• Overview

• Interpretation of terms

• Examples

Overview

There are certain combinations of claims of different categories that are permissible in the same international application as having unity of invention (see Paragraph 10.12 of the PCT International Search and Preliminary Examination Guidelines).

For example, independent claims to a product, a process specially adapted for the manufacture of the product, and a use of the product may be unified.

Interpretation of terms

A process is specially adapted for the manufacture of a product if it inherently results in the product. Similarly, 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.

The terms ‘specially adapted’ and ‘specifically designed’ allow for the claims of different categories to be construed as covering different areas in scope, not just the same area. For example, for a set of claims directed to a process and an apparatus ‘specifically designed’ to carry out that process, the scope may include:

• that the apparatus to be also capable of being used for carrying out another process

• that the process could also be carried out using an alternative apparatus

Examples

Examples of interpretation of unity for claims of different categories can be found in the following examples in the PCT International Search and Preliminary Examination Guidelines:

• Examples 1 – 3 in paragraphs 10.21 to 10.23

• Examples 15 and 16 in paragraphs 10.35 to 10.36

• Examples 18 and 19 in paragraphs 10.38 to 10.39

• Example 23 in paragraph 10.43

Conversely, examples of interpretation of unity for claims of the same category can be found in the following examples in the PCT International Search and Preliminary Examination Guidelines:

• Examples 4 to 7 in paragraphs 10.24 to 10.27

• Example 17 in paragraph 10.37

• Examples 20 to 22 in paragraphs 10.40 to 10.42

• Example 24 in paragraph 10.44

• Example 31 in paragraph 10.51

• Example 43 in paragraph 10.59D