Unity of inventions at the EPO - Amendments to rule 29 EPC

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1 PATENTS Unity of inventions at the EPO - Amendments to rule 29 EPC This document presents provisions of the European Patent Convention regarding unity of invention and their applications by the EPO, both in the course of the Search and of the Substantive Examination. We also present recent amendments to Rule 29(2) EPC, which restrict the possibility for an applicant to have several independent claims of a same category in a same application. I UNITY OF INVENTION The question of unity of invention is first considered by the Search Division of the EPO in their drawing up of the European Search Report. Indeed, Rule 46(1) EPC specifies that : If the Search Division considers that the European patent application does not comply with the requirement of unity of invention, it shall draw up a partial European search report on those parts of the European patent application which relate to the invention, or the group of inventions within the meaning of Article 82, first mentioned in the claims. It shall inform the applicant that if the European search report is to cover the other inventions, a further search fee must be paid for each invention involved, within a period to be fixed by the Search Division which must not be shorter than two weeks and must not exceed six weeks. The Search Division shall draw up the European search report for those parts of the European patent application relating to inventions in respect of which search fees have been paid. The Search Examiners are more and more demanding as to unity of invention and they often make use of Rule 46(1) EPC for establishing a Partial European Search Report. The reasons most frequently put forward by the Search Divisions are the following: - the patent application has several independent claims that do not solve the same problem with respect to what the EPO considers to be the closest prior art with respect to the first independent claim, - the common concept linking the inventions claimed in several independent claims is found to be anticipated, and in addition, among the different inventions, there is no technical relationship involving one or more of corresponding technical features (Rule 30 (1) EPC). In the case of non-unity, a partial search report is established in relation to the invention first

2 mentioned in the claims. The applicant is invited to pay further search fees in order for the EPO to establish a search report in relation to the other inventions. If the Applicant complies with this invitation, a complete search report is established. At a later stage, the Examining Division will most probably confirm the opinion of the Search Examiner with regards to unity : this is becoming more common with the extension of the BEST program. Filing one or more divisional application will be the only possibility of covering the other inventions. If the Applicant does not pay the further search fees, he may still add sub-claims directed to the further inventions (if they are compatible with the first invention). Assuming that the main claim is valid, the patent can then be granted with these sub-claims, no search having been conducted on their features. The applicant will have the possibility of filing Divisional Applications directed to the further inventions. He will of course have to pay search fees to enable a search report to be established in relation to the inventions claimed therein. Since the Partial Search Report is established in relation to the invention claimed first, we recommend first claiming the invention which the applicant considers to be the most advantageous or the most important one. We would also recommend, when possible, claiming the further inventions not only in independent claims but also in sub-claims depending on the first independent claim. This makes it possible for prior art in relation to these further inventions to be produced in the European Search Report without the payment of further search fees. Assuming the Applicant has obtained a search report covering the subject-matter of several independent claims, he may have to face a further difficulty based on Rule 29(2) EPC in the course of the substantive Examination. II AMENDMENTS TO RULE 29(2) EPC Rule 29(2) EPC is actually an application rule of Article 84 EPC. It is dealt with during substantive examination by the Examining Division. It directly concerns more and more European patent applications since amended Rule 29(2) EPC restricts the possibility of the Applicant having an adequate protection through several independent claims of a same category in a same application, even when these offer unity of invention. II.1 Use of several independent claims: general situation One difference between European and US patent practice concerns the use of separate independent claims of a same category in a same application. The US Patent Office does not usually raise any objection against a set of claims comprising such separate independent claims, except when the Examiner raises a lack of unity objection.

3 The European Patent Office is more reluctant to examine applications containing several independent claims of the same category, even when unity of invention is given. The EPO has always considered that the amount of work required for examination strongly depends on the number of independent claims in the application. The situation became more critical in recent years, because of the ever increasing number of applications drafted in so-called US style and filed with the EPO without adaptation to European standards. The proportion of cases in which the number of claims is regarded as excessive by the EPO (since they do not comply with the requirements of Articles 82 and 84 EPC) is thus continuously increasing. II.2 Former Rule 29(2) EPC Typically, in such cases, the EPO used to raise an objection of lack of clarity, on the basis of Article 84 EPC and Rule 29 (2) and/or (5) EPC: Former Rule 29 specified that: (2) Subject to Article 82, a European patent application may contain two or more independent claims in the same category (product, process, apparatus or use) where it is not appropriate, having regard to the subject-matter of the application, to cover this subjectmatter by a single claim. (5) The number of claims shall be reasonable in consideration of the nature of the invention claimed. If there are several claims, they shall be numbered consecutively in Arabic numerals. This former version of Rule 29(2) expressly reserved the Applicant s rights to file several independent claims of the same category. The burden of proof for refusing a plurality of such claims was thus on the side of the EPO. In an effort to deal with the new situation resulting from the ever increasing number of UStype applications, the EPO decided to change the burden of proof from the side of the EPO to the side of the Applicant. Rule 29(2) was thus strengthened in order to reduce considerably the scope for interpretation provided by the existing text. II.3 The amended Rule 29(2) Rule 29(2) as in force since January 2002, reads: (2) Without prejudice to Article 82, a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the

4 subject-matter of the application involves one of the following: (a) a plurality of inter-related products; (b) different uses of a product or apparatus; (c) alternative solutions to a particular problem, where it is not appropriate to cover these alternatives by a single claim. Amended Rule 29(2) gives a clear legal basis in the European patent Convention for refusing an application comprising more than one independent claim of a same category, even when these claims offer unity of invention. Its application does not require a lengthy substantive argumentation by the Examiner. II.4 Practical use and comments : Having stated that the number of independent claims is limited to one independent claim in each category, the Guidelines concerning Rule 29(2) give examples of situations where several independent claims could be accepted: (a) plurality of inter-related products : - plug/socket - transmitter/receiver - intermediate/final chemical products - gene/gene construct/host/protein/medicament; (b) different uses of a product or apparatus : - second or further medical uses in the claim format of a second medical use -type claim; (c) alternative solutions to a particular problem : - a group of medical compounds - two or more processes for the manufacture of such compounds. The Applicant who wants to maintain more than one independent claim in a same category must now convincingly show that all independent claims fall under one of the exceptions a-c explicitly given in amended Rule 29(2) EPC. We can confirm that, since Amended Rule 29(2) came into force, the Examiners tend to raise objections on the basis of this Rule when at least two independent claims of a same category are contained in the set of claims. In our experience, such objections mainly concern the fields of mechanics and electronics. Based on such objections, the Examiners may force the Applicant: - to file a single independent claim covering all embodiments covered by the several initial independent claims; however this is not always possible, in particular in view of the very strict application of Art. 123(2) EPC by the EPO, - or to file one or more divisional applications,

5 - or simply to abandon one or more definitions of the invention. In drafting the application, special attention must be given to the presentation of the technical problem since, based on Rule 29(2)(C), several independent claims of this same category can be accepted if they define alternative solutions to a particular problem. For the moment, there is only a little case law from the EPO Boards of Appeal concerning Rule 29(2) EPC in its current wording. It appears however that although the use of more than one independent claim must be justified by the Applicant (cf. decision T 56/01), it is possible to maintain two independent claims (decisions T 81/02, T 659/03), in particular when the two independent claims relate to two structurally distinct means for solving the same problem in essentially the same way as required by Rule 29(2)(c) (decisions T 525/03, T 133/02). Although having more than one independent claim in a given category complicates patent examination (decision T 56/01, point 4.3), it was observed (decision T 81/02, point 2.4) that the presence of two independent claims does not necessarily impose an unacceptable burden on the skilled person attempting to determine the scope of protection. Furthermore, it has been recognized that the creation of a new single and broader independent claim encompassing the two former independent claims may well lead to contravention of Article 123(2) EPC (decision T 525/03, point 4.5). There do not appear to be any decisions where an EPO Board of Appeal has formally judged whether the presence of three (or more) independent claims in a given category can be accepted under Rule 29(2) and Article 84 EPC and under what circumstances. Cabinet Beau de Loménie October 2002/September 2004/June 2006.