UNITY

Overview
How unity is assessed
Lack of unity


OVERVIEW 


Behind the concept of unity of invention is the principle that a patent application should relate to one invention only (although a group of inventions may be accepted if there is a conceptual link between these inventions, as explained later in this chapter). The main reason for this is to ensure that applicants are treated equally.

European Patent Convention
Article 82 EPC: Unity of invention
Rule 44 EPC: Unity of invention

Imagine two competing companies, both of which make refrigerators. Both companies file applications in which they claim new kinds of coolant. Unlike the first company, the second company additionally includes a separate set of claims in its application. This separate set of claims defines a new kind of pump, which has a particularly low rate of power consumption.

If the EPO accepted the application filed by the second company without charging the additional fees required to have more than one invention searched, it would give the second company an advantage. The second company would get a more extensive service (searches in different technical areas, protection of two completely different refrigerator components) for the same price. Article 82 EPC prevents an applicant from having multiple inventions searched and subsequently examined, and possibly even patented, for the price of one.

In this way, unity helps to:

  • Limit search and subsequent examination work whilst ensuring a consistent service for all applications in the search and examination phases
  • Enable the public to easily identify all cases in which a patent can be infringed


Multiple inventions can also be unitary provided that there is a conceptual inventive link between them. In other words, a group of inventions is considered unitary if their
inherent special technical features solve the same technical problem.

Example

Prior art: A chair with a wooden sitting surface.
Claim 1: A chair with a 2 cm latex layer on the outer sitting surface.
Claim 2: A chair with 2 cm long springs on the outer sitting surface.
Reasoning: Provided that the technical problem to be solved is to provide a softer seating experience for the user, there can be said to be a technical relationship between the two claimed inventions.
As a result, there is unity of invention.

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HOW UNITY IS ASSESSED


The outcome of a unity assessment depends on the prior art identified in the search phase. In some cases it is possible to conclude a lack of unity a priori, i.e. without having to carry out a prior search for the closest state of the art, on the basis of common general knowledge or statements of prior art contained in the application. 

Example
It is a priori obvious that an independent claim based on a refrigerator using a certain cooling fluid has no subject-matter in common with an independent claim based on a radio receiver employing an array antenna.

In most cases, however, lack of unity only becomes apparent a posteriori, i.e. on the basis of documents found in the search for relevant prior art.

To analyse unity (EPO GL F-V, 4), examiners:

  • Analyse the claims
  • Analyse the technical features
  • Identify the common matter (same and corresponding features) and the remaining features (non-corresponding features) among the claims by answering the following questions:
-       Which features are identical?
-       Which features are corresponding, i.e. provide the same technical effect/solve the same technical problem?
-       Which remaining features are not corresponding, i.e. have a different technical effect/solve different technical problems?
  • Identify the prior art at hand
  • Establish if the common matter is known or obvious in view of the prior art at hand

Let’s see how this happens in practice.

Example: Case A

Features
Claims

Same
1. A chair (A) comprising:
2. A chair (A) comprising:
Corresponding
- movable rollers on the back,
- guide rails, wherein the rollers are movably mounted thereon,
- a motor,
- a control system adapted to control the motor such that the rollers move along the guide rails (B).

- movable protrusions on the back,
- a motor,
- a control system adapted to control the motor such as to vibrate the protrusions  (B),

Different
-----
- and an integrated loudspeaker on each side (C).

The feature “a chair” is present in both claims and is the “same technical feature”.

The features “rollers + rails + motor + control” (B) and “protrusions + motor + control” (C) solve the problem of how to modify a chair to provide a massaging function. They are corresponding features.

The feature “loudspeakers” (C) solves a different problem, namely how to modify a chair to enable the user to listen to music.

The two claims share the following common matter:

  • A chair (same technical feature)
  • Means to provide a massaging function (corresponding technical feature)

The prior art (document D1) discloses a chair. 

The same feature (A) is known from the prior art. It is not special.

The corresponding feature of (B)/(C), i.e. “means to provide a massaging function”, is not disclosed in the prior art, i.e. it is special.

The common matter involves at least one special technical feature that is the same or corresponding.

Therefore, the application is unitary.

Example: Case B

Features
Claims

Same
1. A chair (A) comprising:
2. A chair (A) comprising:
Corresponding
-----
-----
Different
- movable rollers on the back,
- guide rails, wherein the rollers are movably mounted thereon,
- a motor,
- a control system adapted to control the motor such that the rollers move along the guide rails (B).
- an integrated loudspeaker on each side (C).  


The feature “a chair” is present in both claims and is the “same technical feature”.

The features “rollers + rails +motor+ control” (B) and “loudspeakers” (C) are different.

The features “rollers + rails + motor + control” (B) solve the problem of how to modify a chair to provide a massaging function.

The feature “loudspeakers” (C) solves the problem of how to modify a chair to enable the user to listen to music.

The different features (B) and (C) solve different problems, i.e. they have different technical effects. Therefore, they are NOT corresponding.

The common matter is “a chair” (same technical feature).

The prior art (document D1) discloses a chair. 

The same feature (A) is known from the prior art. It is not special. 

The common matter therefore does not involve any special technical features that are the same or corresponding.

Without any special technical features that are the same or corresponding, the claims are not linked by a single general inventive concept and the application therefore lacks unity.


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LACK OF UNITY


If an invention is not unitary, the examiner must provide a logically presented argument following the same method.

With this in mind, the examiner will send the applicant a partial search report based on those parts of the application relating to the invention mentioned first in the claims. The partial search report also contains a provisional opinion on the reasons for the findings of non-unity and an invitation to pay additional search fees.

If the applicant decides to pay these additional fees, a search report will be provided accompanied by a search opinion containing the reasoning behind the lack of unity, an opinion on the first invention or unitary group of inventions mentioned in the claims and an opinion on all inventions or unitary groups of inventions for which additional search fees have been paid. 

To learn more about how lack of unity can affect an application and how it can be resolved, see the course Search reports and written opinions.

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