W 0008/99 28-09-1999
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I. International patent application PCT/US 98.... was filed on 27 April 1998 with thirteen claims of which the independent claims read:
"1. A process for preparing a compound of the formula:
"2. A process for preparing a compound of the formula:
Claims 3 to 10 were dependent on Claim 1 or 2 and Claims 12 and 13 were dependent on Claim 11.
II. On 29 December 1998 the European Patent Office (EPO), acting as an International Preliminary Examining Authority (IPEA), informed the applicant that the application did not comply with the requirement of unity of invention and invited him to restrict the claims or to pay one additional examination fee pursuant to Article 34(3)(a) and Rule 68.2 PCT within a period of one month.
In an annex to this invitation the IPEA submitted that the application related to two inventions, namely:
group (i): Claims 1 to 10 relating to a process for preparing 6-monoesters of .... or an acid addition salt thereof and
group (ii): Claims 11 to 13 relating to a process for purifying an acid addition salt of 6-monoesters of .....
Since the common concept linking the two groups of invention could only lie in the acid addition salts of 6-monoesters of .... and since these compounds were known from inter alia document (1), ...., the IPEA was of the opinion that the two inventions were not linked by a single inventive concept.
III. With letter received on 27 January 1999, the applicant paid one additional fee under protest pursuant to Rule 68.3(c) PCT and in his reasoned statement he submitted that both inventions were closely related having a common goal, namely, to provide a novel process for the preparation of purified acid salts of 6-monoesters of .....
IV. On 11 February 1999, the IPEA issued a communication informing the applicant that after a prior review of the justification for the invitation to pay an additional fee, the requirement of payment thereof was upheld. The applicant was thus invited under Rule 68.3(e) PCT to pay the protest fee.
V. The protest fee was paid in due time.
1. According to Article 155(3) EPC the Boards of Appeal of the EPO are responsible for deciding on a protest made by an applicant against an additional fee charged by the EPO under the provisions of Article 34(3)(a) PCT. The Board is thus competent for examining the present protest.
2. The protest is admissible
3. From the separate sheet to the invitation for paying the protest fee it follows that the review panel, which decided on the justification for inviting to pay an additional fee, was composed of three members as prescribed by the President of the EPO (OJ EPO 1992, 547) and was thus competent for inviting to pay a protest fee.
4. According to Rule 13.1 and 13.2 PCT the requirement of unity of invention may only be fulfilled if a group of inventions is so linked as to form a single general inventive concept, ie if there is a technical relationship among the inventions involving one or more of the same or corresponding technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
5. It follows from the application in suit that a process for preparing 6-monoesters ..... was known from document (1) (see the application as filed, page 2, line 25 to page 3, line 7). Furthermore, it follows from the application that the technical problem underlying the invention was the fact that the time required to drive the formation of the .... ether to completion through removal of water increases as the size of the reaction is increased and that, according to the present invention, it has been found that by replacing .... with .... as the solvent in the process described in document (1), the time required to drive the reaction to completion by removal of water is substantially decreased (page 3, lines 8 to 13, of the application as filed).
Consequently, the technical feature defining a contribution over the prior art of group (i) is the use of a .... instead of .... in a process of preparing .... or an acid addition salt thereof, thus avoiding the disadvantages of the process known from document (1).
6. This technical feature is not present in the invention according to group (ii): since the invention concerns a specific process of purifying acid addition salts of ...., the technical feature defining a contribution over the prior art is the combination of steps (a) to (h) as defined in Claim 11 in order to purify acid addition salts of 6-monoesters of ...., independent thereof whether this acid addition salt has been obtained according to a process as defined in Claims 1 to 10.
7. Since in the inventions according to group (i) and group (ii) completely different technical features define a completely different contribution over the prior art, there is no technical relationship involving the same technical feature among both groups of inventions and, consequently, the requirement of unity of invention according to Rule 13.1 and 2 PCT is not fulfilled.
8. The Applicant was of the opinion that both inventions had a common goal, namely, to provide a process for the preparation of purified acid salts of 6-monoesters of .....
However, the Board cannot follow this reasoning, since the group (i) inventions are not related to a process of preparing purified .... or acid addition salts thereof, but to a process of preparing any .... or acid addition salt thereof, independently of whether it is obtained in a pure form or whether an additional purification step is conducted.
That the purification step is not restricted to be applied to products obtained according to Claims 1 to 10. and that any purification step may be used is clearly confirmed by the teaching on page 8, lines 20 to 22, of the application as filed, where it is said that the acid addition salt of .... resulting from the preparation process may be isolated and purified by techniques well known by one of ordinary skill in the art, such as crystallisation.
9. For the foregoing reasons, the Board comes to the conclusion that the inventions according to group (i) and group (ii) do not form a single general inventive concept and, consequently, that the invitation made under Article 34(3)(a) and Rule 68.2 PCT to pay one additional fee was justified.
ORDER
For these reasons it is decided that:
The protest according to Rule 68.3(d) PCT is dismissed.