6.1.4.6 Biotechnological Inventions

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

• 6.1.4.7 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 with Clear Lack of Unity

• 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 from the EPO

Key Legislation:​​​​​​​

PCT ISPE Guidelines:

• Chapter 10 Unity of Invention

  • Paragraph 10.34

  • Paragraph 10.43

  • Paragraph 10.50

  • Paragraph 10.55–10.59​​​​​​​​​​​​​​

Examiners must assess applications claiming multiple nucleic acid or peptide sequences to determine whether or not a special technical feature exists, which some, or all of the claimed sequences share. While there will be circumstances in which unity of invention will be lacking, equally there will be circumstances in which multiple sequences will be a single invention. Examiners should note that the mere presence of multiple sequences is not sufficient to establish that unity of invention is lacking.

Examiners should also be aware of the potential applicability of Markush practice to applications claiming sequences and should ensure that this approach is taken into account when assessing unity in such cases.

The same principles and guidelines should be applied to biotechnological inventions relating to multiple nucleic acid or peptide sequences. In particular, see paragraphs 10.34, 10.43, 10.50, and 10.55 to 10.59 of the PCT International Search and Preliminary Examination Guidelines for examples of practice where applications claim multiple nucleic acid or peptide sequences.