6.1.4.7 Single General Inventive Concept

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

• 6.1.4.8 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:

Regulations under the PCT:

• Rule 13.1 Requirement

PCT ISPE Guidelines:

• Chapter 10 Unity of Invention

  • Paragraph 10.04​​​​​​​​​​​​​​

​​​​​​​Related Chapters:

• 6.1.4.3 Combinations of Different Categories of Claims

On this page

• Introduction

• Assessing technical features of inventions

  • Features common to different teachings

• Partial identity among teachings in an application

• When a group of features is known from the prior art

Introduction

For there to be unity of invention, claimed inventions need to be linked by a single general inventive concept (Rule 13.1). This requirement means that more than simply some link is needed between a group of inventions claimed. There must be either a common technical problem or at least, if there is more than one technical problem, there must be one single technical concept behind the solutions of these different problems. See, for example, EPO decision case W0009/93.

Assessing technical features of inventions

When considering whether unity exists, the technical features of the inventions need to be assessed as to the contribution they provide. Examiners need to consider the possible effects of the various inventions to determine whether they are technically connected and thus form a single general inventive concept. Reference to the description in the application will assist in determining the problem to be solved or the effect to be achieved. This will aid in the determination of the inventive concept and whether each invention is directed thereto. Any acknowledged prior art in the description may aid in determining the problem. See for example, Fibre Fleece  OJ EPO 4/1993, 225; (1993) EPOR 515 and Cervical Punch/WISAP OJ EPO 4/1994, 239; IIC Vol 25 No.6/1994, 906.

Features common to different teachings

A single inventive concept may be revealed in features common to different teachings expounded individually in the same application. A teaching may encompass not only the immediate subject-matter representing the solution to the problem as defined in the relevant claim, but also its technical consequences which are expressed as effects. Any subject-matter is defined by structural features and the relationship between them. The relevant effects, that is, the outcome or results achieved by the invention as claimed, will usually be apparent from the problem as stated.

Partial identity among teachings in an application

A single general concept may be said to be present only if, at least, a partial identity exists among the teachings in an application – either from the structural features of the subject-matters claimed and/or the outcome or results associated with those subject-matters.

Examples embodying a single general inventive concept are shown in the subject matters referred to in 6.1.4.3 Combinations of Different Categories of Claims. In one respect the partial identity between the product and its use derives from the structural features of the product. In another respect the partial identity shared by the product and the process specially adapted for its manufacture derives also from the product, which is to be considered as the effect or result of this process. See Artificial Hip Joint/DRAENERT OJ EPO 8/1991, 438; (1991) EPOR 516 at point 3.2.

When a group of features is known from the prior art

A group of features common to claimed inventions may form a single general concept. However, if this group is known from the prior art then on its own it does not form a single general inventive concept as required by Rule 13.1 (PCT/GL/ISPE/12 at paragraph 10.04). See, for example, Cervical Punch/WISAP (supra).