1. General remarksAssessment of and reasoning for unity of invention

Given the harmonisation of the definitions concerning unity of invention in Rules 13.1 and 13.2 PCT compared with Art. 82 EPC and Rule 44(1) EPC respectively, the formal criteria for unity in the EPC and the PCT systems are the same. Hence, search and substantive examination follow the same principles in both the European and PCT procedures as far as the reasoning for unity of invention is concerned.

As a consequence, the parts relating to the assessment of unity of invention and its reasoning of GL/EPO F‑V, 1 to GL/EPO F‑V, 3 and all subsections apply mutatis mutandis to the PCT procedure, with the exception of those passages in GL/EPO F‑V, 2.1 and GL/EPO F‑V, 3.2.1 relating to Rule 43(2) EPC. This is because Rule 43(2) EPC has no equivalent in the PCT, which also means that, in the PCT procedure, multiple independent claims in the same category need to be considered under the Art. 6 conciseness requirement.

Intermediate documents cited under Rule 33.1(c) (see GL/PCT‑EPO B‑X, 9.2.4) are considered in the same way as documents under Art. 54(3) EPC (see GL/EPO F‑V, 3.1) and cannot be used for a non-unity objection.

This is also the case for novelty-destroying documents cited under Rule 33.1(a) as accidental anticipation within the meaning of decisions G 1/03 and G 1/16 of the EPO’s Enlarged Board of Appeal (see GL/EPO F‑V, 3.1.2).

The international application must relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.

When determining unity of invention, a finding of lack of clarity of the claims is on its own not sufficient grounds for a finding of lack of unity.

Normally, too, the sequence of the claims should not have an impact on the determination of unity of invention. However, it will have an impact on which invention is to be considered the first invention mentioned in the claims (see GL/PCT‑EPO F‑V, 8.2).

Moreover, the fact that the claimed separate inventions belong to different groups of the classification is not in itself a reason for a finding of lack of unity.

An application may contain claims of different categories, or several independent claims of the same category. This is not in itself a reason for an objection of lack of unity of invention if the requirements of Rules 13.1 to 13.3 are otherwise met.

With regard to substantive criteria, unity of invention is examined in search and substantive examination in both European and PCT procedures according to the same principles. This does not apply to the respective procedures themselves, where significant differences exist (see also GL/PCT‑EPO B‑VII).

2.Special technical features

See ISPE Guidelines 10.01 and 10.12-10.16.

See also GL/PCT‑EPO F‑IV, 3.2 with regard to potential clarity and conciseness issues for plural independent claims in one category complying with the requirement of unity of invention.

3.Intermediate and final products

See ISPE Guidelines 10.18.

4.Alternatives

See ISPE Guidelines 10.09.

5.Markush grouping

See ISPE Guidelines 10.17.

There is no need for the significant structural element to be novel in absolute terms (i.e. novel per se). Rather, this expression means that in relation to the common property or activity there must be a common part of the chemical structure which distinguishes the claimed compounds from any known compounds having the same property or activity. However, if it can be shown that at least one Markush alternative is not novel, unity of invention should be reconsidered. In particular, if the structure of at least one of the compounds covered by a Markush claim is known together with the property or technical effect under consideration, this is an indication of lack of unity of the remaining compounds (alternatives).

6.Individual features in a claim

See ISPE Guidelines 10.10.

See also GL/PCT‑EPO G‑VII, 7.

7.Lack of unity "a priori" or "a posteriori"

See ISPE Guidelines 10.03.

8.Examiner's approach

ISPE Guidelines 10.04 apply.

For the particular case of claims for a known substance for a number of distinct medical uses, see GL/PCT‑EPO G‑II, 4.2.

When there is lack of unity, the claimed subject-matter is divided among the separate inventions. In this context the word "invention" means an invention having technical character and concerned with a technical problem within the meaning of Rule 5.1(a)(iii), which does not necessarily need to meet other requirements for patentability, such as novelty and inventive step (see GL/PCT‑EPO G‑VI and GL/PCT‑EPO G‑VII).

8.1Reasoning for a lack of unity objection

Sections F‑V, 3.3 and F‑V, 3.3.1 in the Guidelines for Examination in the EPO apply mutatis mutandis.

8.2Determination of the invention first mentioned in the claims

Section F‑V, 3.4 in the Guidelines for Examination in the EPO applies mutatis mutandis.

See also GL/PCT‑EPO B‑VII, 2.

9.Dependent claims

See ISPE Guidelines 10.06 to ISPE Guidelines 10.08.