PCT International Search and Preliminary Examination Guidelines
PART III EXAMINER CONSIDERATIONS COMMON TO BOTH THE INTERNATIONAL SEARCHING AUTHORITY AND THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
Chapter 10 Unity of Invention
Illustrations of Particular Situations
10.11 There are three particular situations for which the method for determining unity of invention contained in Rule 13.2 is explained in greater detail:
(i) combinations of different categories of claims;
(ii) so-called “Markush practice;” and
(iii) intermediate and final products.
Principles for the interpretation of the method contained in Rule 13.2, in the context of each of those situations are set out below. It is understood that the principles set out below are, in all instances, interpretations of and not exceptions to the requirements of Rule 13.2. Examples to assist in understanding the interpretation on the three areas of special concern referred to in the preceding paragraph are set out below.
Combinations of Different Categories of Claims
10.12 The method for determining unity of invention under Rule 13 is construed as permitting, in particular, the inclusion of any one of the following combinations of claims of different categories in the same international application:
(i) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product, and an independent claim for a use of the said product (see paragraph 10.21 – Example 1), or
(ii) in addition to an independent claim for a given process, an independent claim for an apparatus or means specifically designed for carrying out the said process, or
(iii) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product and an independent claim for an apparatus or means specifically designed for carrying out the said process.
A process is specially adapted for the manufacture of a product if it inherently results in the product and an apparatus or means is specifically designed for carrying out a process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art.
10.13 Thus, a process is considered to be specially adapted for the manufacture of a product if the claimed process inherently results in the claimed product with the technical relationship being present between the claimed product and claimed process. The words “specially adapted” are not intended to imply that the product could not also be manufactured by a different process.
10.14 Also an apparatus or means is considered “specifically designed for carrying out” a claimed process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art. Consequently, it would not be sufficient that the apparatus or means is merely capable of being used in carrying out the claimed process. However, the expression “specifically designed” does not imply that the apparatus or means could not be used for carrying out another process, nor that the process could not be carried out using an alternative apparatus or means.
10.15 More extensive combinations than those set forth in paragraph 10.12 should be looked at carefully to ensure that the requirements of both Rule 13 (unity of invention) and Article 6 (conciseness of claims) are satisfied. (See paragraph 5.42 regarding conciseness of claims.) In particular, while a single set of independent claims according to one of the subparagraphs of paragraph 10.12 is always permissible, it does not require the International Authority to accept a plurality of such sets which could arise by combining the provisions of Rule 13.3 (which provides that the determination of unity of invention be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim), with the provisions set out in paragraph 10.12 (thus resulting in a set under paragraph 10.12 based on each of a number of independent claims in the same category under Rule 13.3 (see paragraphs 5.12 to 5.14)). The proliferation of claims arising from a combined effect of this kind should be accepted only exceptionally. For example, independent claims are permissible for two related articles such as a transmitter and receiver; however, it does not follow that, under paragraph 10.12, an applicant may include also, in the one international application, four additional independent claims: two for a process for the manufacture of the transmitter and the receiver, respectively, and two for use of the transmitter and receiver, respectively.
10.16 A single general inventive concept must link the claims in the various categories and in this connection the wording of paragraph 10.12 should be carefully noted. The link between product and process in subparagraph (i) is that the latter must be “specially adapted for the manufacture of” the former. Similarly, in paragraph 10.12, subparagraph (ii), the apparatus or means claimed must be “specifically designed for” carrying out the process. Likewise, in subparagraph (iii), the process must be “specially adapted for the manufacture of)” the product and the apparatus must be “specifically designed for” carrying out the process. In combinations (i) and (iii), the emphasis is on, and the essence of the invention should primarily reside in, the product, whereas in combination (ii) the emphasis is on, and the invention should primarily reside in, the process.
“Markush Practice”
10.17 Rule 13.2 also governs the situation involving a single claim that defines alternatives (chemical or non-chemical), the so-called “Markush practice.” In this special situation, the requirement of a technical interrelationship and the same or corresponding special technical features as defined in Rule 13.2, is considered met when the alternatives are of a similar nature.
(a) When the Markush grouping is for alternatives of chemical compounds, they are regarded as being of a similar nature where the following criteria are fulfilled:
(A) all alternatives have a common property or activity, and
(B)(1) a common structure is present, that is, a significant structural element is shared by all of the alternatives, or
(B)(2) in cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognized class of chemical compounds in the art to which the invention pertains.
(b) In paragraph (a)(B)(1), above, the words “significant structural element is shared by all of the alternatives” refer to cases where the compounds share a common chemical structure which occupies a large portion of their structures, or in case the compounds have in common only a small portion of their structures, the commonly shared structure constitutes a structurally distinctive portion in view of existing prior art, and the common structure is essential to the common property or activity. The structural element may be a single component or a combination of individual components linked together. (See paragraphs 10.46 and 10.47 – Examples 26 and 27).
(c) In paragraph (a)(B)(2), above, the words “recognized class of chemical compounds” mean that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention. In other words, each member could be substituted one for the other, with the expectation that the same intended result would be achieved. (See paragraph 10.53 – Example 33).
(d) The fact that the alternatives of a Markush grouping can be differently classified is not, taken alone, considered to be justification for a finding of a lack of unity of invention.
(e) When dealing with alternatives, if it can be shown that at least one Markush alternative is not novel over the prior art, the question of unity of invention should be reconsidered by the examiner. Reconsideration does not necessarily imply that an objection of lack of unity will be raised.
Intermediate and Final Products
10.18 Rule 13.2 also governs the situation involving intermediate and final products.
(a) The term “intermediate” is intended to mean intermediate or starting products. Such products have the ability to be used to produce final products through a physical or chemical change in which the intermediate loses its identity.
(b) Unity of invention is considered to be present in the context of intermediate and final products where the following two conditions are fulfilled:
(A) the intermediate and final products have the same essential structural element, in that:
(1) the basic chemical structures of the intermediate and the final products are the same, or
(2) the chemical structures of the two products are technically closely interrelated, the intermediate incorporating an essential structural element into the final product, and
(B) the intermediate and final products are technically interrelated, this meaning that the final product is manufactured directly from the intermediate or is separated from it by a small number of intermediates all containing the same essential structural element. (See paragraphs 10.28 and 10.29 – Examples 8 and 9).
(c) Unity of invention may also be considered to be present between intermediate and final products of which the structures are not known, for example, as between an intermediate having a known structure and a final product the structure of which is not known, or as between an intermediate of unknown structure and a final product of unknown structure. In order to satisfy unity in such cases, there must be sufficient evidence to lead one to conclude that the intermediate and final products are technically closely interrelated as, for example, when the intermediate contains the same essential element as the final product or incorporates an essential element into the final product. (See paragraphs 10.32 and 10.33 – Examples 12 and 13).
(d) It is possible in a single international application to accept different intermediate products used in different processes for the preparation of the final product, provided that they have the same essential structural element.
(e) The intermediate and final products must not be separated, in the process leading from one to the other, by an intermediate that is not new.
(f) If the same international application claims different intermediates for different structural parts of the final product, unity is not regarded as being present between the intermediates.
(g) If the intermediate and final products are families of compounds, each intermediate compound must correspond to a compound claimed in the family of the final products. However, some of the final products may have no corresponding compound in the family of the intermediate products so that the two families need not be absolutely congruent.
10.19 As long as unity of invention can be recognized applying the above interpretations, the fact that, besides the ability to be used to produce final products, the intermediates also exhibit other possible effects or activities should not affect the decision on unity of invention.