It also contains a series of exercises which will allow you to apply what you have learnt and to check whether you have understood the principles and rules applied under the EPO.
Overview
The basic idea 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).
Unity of invention was first mentioned in the Paris Convention for the Protection of Industrial Property of 1883.
The reasons why unity of invention is required include:
• To ensure equal treatment of applicants (by preventing applicants paying one fee for several inventions to be searched and examined in a single application).對申請人公平, 避免付一次費用就可以審多個專利
• To limit search and examination work (economic reasons for patent offices). 避免過度檢索
• To provide the public with full information (no "hidden" inventions in an application). 公眾容易了解
Decisions on the unity of invention in patent applications are subjective opinions based on reasoned technical and legal arguments.
Legal basis: Article 82 and Rule 44 EPC
Article 82 EPC defines the requirement of unity as follows:
"The European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept."
Rule 44 EPC details the circumstances under which a group of inventions may be considered unitary:
"Where a group of inventions is claimed …, the requirement of unity of invention … shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those features which define a contribution which each of the claimed inventions considered as a whole makes over the prior art."
The search division and a first opinion on unity
An initial opinion on whether the claims of an application fulfil the requirement of unity or not is formed by the search division (i.e. the search examiner). The applicant is informed if a lack of unity objection(反對, 異議) is raised(浮起, 升高) at this stage and if additional search fees have to be paid to get more than the first invention searched.
Where applicable, the different groups of claims representing the different inventions are indicated in the published search report along with reasoned arguments in support of the opinion.檢索報告會指出不符單一的原因
Applicants refusing to pay additional fees do not suffer any loss of rights (scope of protection, validity of priority, filing date, etc.). 不符合單ㄧ對申請人沒有損失
檢索階段申請人先被告知, 申請人可以先反映, 或者不動作
審查階段才決定是否符合單一
The examining division and the final decision
The final decision as to unity is made by the examining division (usually comprising three technically qualified examiners) during the substantive examination phase. If the examining division disagrees with the findings of the search division, any additional fees paid may be reimbursed(償還；歸還).
substantive 表示實在的；獨立的 堅固的 大量的
As with any other final decision taken by the examining division and negatively affecting the applicant, an appeal may be filed before the boards of appeal as the second instance if an application is refused for lack of unity.
Even if multiple inventions were searched by the search division, in the substantive examination phase the application must be limited to a single invention to be examined with a view to possible patent protection.
就算檢索階段檢索了多個發明, 到了審查階段還是只有一個發明可以被接受
Divisional applications may be filed for the other inventions, provided that the original non-unitary application (the "parent" application) is still pending and provided that the divisional applications fulfil the requirements of Article 76 and Rule 36 EPC.
可提出分割案申請, 即使母案未審結
Lack of unity a priori/a posteriori (對先出現而言/對後出現而言)
Only in very exceptional cases is it possible to conclude a lack of unity a priori, i.e. without a prior search for the closest state of the art. One example would be if the skilled person is already familiar with what is common prior art in the field. Also, if two claimed inventions are so fundamentally different that it is evident that there cannot be any link between them, a lack of unity objection can be raised a priori.
By way of example, imagine an application where a first independent claim is directed to a refrigerator using a certain cooling fluid, and a second independent claim is directed to a radio receiver employing an array antenna.
However, the standard case is the a posteriori lack of unity objection, where an analysis of the closest prior art found in the search reveals the lack of unity.
檢索前就發現單一問題的狀況太少, 大部分是檢索後發現非相關發明
由於發明單一性是以對先前技術之貢獻來定義，故專利申請案可以先天(a priori)和後天
(a posterior)的兩種方式被判斷為欠缺發明單一性。前者例如在申請專利範圍中包含火車引擎與海灘椅之請求標的，無需和先前技術比對，就能判斷兩發明不可能具有共同
的特定技術特徵，屬先天的不具發明單一性。後者如本案例之情況，經與先前技術比較後，始認為原先設想的特定技術特徵不存在，屬後天的不具發明單一性。
The "special technical features" approach
special technical features are those features that make a contribution over the prior art
The procedure for assessing unity under Rule 44 consists of four steps. For the sake(目的) of simplicity, we will assume in this case that the group of inventions consists of two different independent claims, claiming subject-matter A and B respectively. Click on the boxes to find out more about each of the four steps.
In the first step, we select the prior art closest to subject- matter A (usually a single published document found in the search for prior art).
In the second step, we identify the special technical features (at least one is needed for the analysis). This is done by applying the problem-solution approach (PSA). Those features in the definition of subject-matter A that constitute(組成) the difference over the closest prior art are considered to solve the objective problem underlying(基本的根本的) A. They make a contribution over the prior art and are therefore considered to be "special technical features".
Next, in a third step, we identify the special technical features of subject-matter B. This is done using the same prior art as selected in the first step, and applying the problem-solution approach to subject-matter B.
Finally, in a fourth step, we analyse whether at least two of the special technical features found in the second and third steps are equal or corres-ponding. By "corresponding" we mean features that are not the same but that are clearly interrelated. There are basically three groups of corresponding features:
• equivalent features (e.g. a metal spring and a rubber block, both providing resiliency) 等效特徵, 如同為具有彈性物體
• complementary features (e.g. a multiplexing step and its related demultiplexing step, or a plug and a socket)互補特徵, 如插頭和插座
• co-operative features (e.g. a special key and the lock to be operated with it) 相互作用的技術特徵
Q 為何是at least two of the STF, 不是其他數量??
special technical features are those features that make a contribution over the prior art
The "single general inventive concept" approach 單一整體發明概念
In addition to the special technical features approach, we can also use a method known as the "single general inventive concept" approach, which comprises three steps. This approach can be used if the first "invention" (group of claims) does not have any special technical features because there is no novel or inventive subject- matter in the claims.(請求項中所有內容沒有任何新穎或進步的標的物) In such cases, the special technical feature approach is not applicable because there is nothing to compare in step four.
The three steps of the single general inventive concept approach are as follows:
Step 1: Identify the independent claims of the application.
Step 2: Formulate a single general (i.e. "common") concept for all the independent claims.
Step 3: If no single general concept can be identified, or if the single general concept is known or clearly obvious from the state of the art, then the application lacks unity of invention because there is no single general inventive concept linking the different groups of claims.找不到單一整體概念, 或單一整體概念為習知技術
Example 2: A plug socket (I)
claim1 插頭
claim2 插座
相互補所以沒有單一性問題
Example 2: A plug socket (II)
claim1 插頭, 具有平的表面易於製造(STF)
claim2 插座, 具有彈性接觸點易於使插頭插入(STF)
STF完全不同
As neither the special technical features nor the underlying problems are equal or corresponding, we can conclude that in this case the independent claims for the plug and the socket lack unity of invention.
Conclusion
The concept of unity of invention is based on the "one patent for one invention" principle.
The result of an assessment of unity depends on the closest prior art identified in the search phase.
Multiple independent claims may be unitary if they are so linked as to form a single general inventive concept.
The final decision on unity is taken by the examining division.
Filing an application with non-unitary claims does not necessarily result in a loss of rights.
Exercise 6
Claim 1: A process for manufacturing product P, characterised by steps A and B.
Claim 2: Apparatus specifically designed for carrying out step A.
Claim 3: Apparatus specifically designed for carrying out step B.
(a) In a first case the search reveals that there is no relevant prior art with respect to the claimed process. In other words, neither step A nor step B are known in processes to produce P.
b) In a second case the search reveals that step A is well known in processes for producing P.
In both cases there is no common special technical feature in claims 2 and 3.
Exercise 8
A set of claims comprises three independent claims:
• one for a product P
• one for a process specially adapted for and resulting in the manufacture of the product P
• one for a particular use of the product P
Which of the following is sufficient to establish unity of invention? (There may be more than one correct answer)
The product P is inventive over the prior art.
The product P is novel over the prior art.
The three independent claims share three special technical features that are corresponding.
The search can be carried out in a single relevant IPC class.
None of the above.
Exercise 12
Claim 1: A control circuit for an asynchronous electric motor using an LS TTL (low power Schottky transistor-transistor logic) circuit.
Claim 5: A control circuit for an electric step motor using an LS TTL circuit.
Claim 8: A method of controlling an asynchronous motor or a step motor using an LS TTL circuit.
There is a prior art document that mentions that piezo electric motors can be controlled with LS TTL circuits.
lack of unity
That's the right answer.
There is no common special technical feature as it is known to use LS-TTL circuits to control electric motors.
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