A Posteriori Unity & Dependent Claims

In the last few months I’ve noticed a change in practice among some EPO Examiners when it comes to unity and dependent claims.

The objection runs as follows: object to the independent claim for lacking novelty/inventive step; decide that each dependent claim comprises a different technical feature; conclude that the claim set lacks unity a posteriori. This is often combined with the fact that only the first dependent claim is deemed to be searched, leaving the only apparent option to be the filing of a divisional application.

HMS Unity

While possibly technically correct, something about the literal and inflexible approach taken by these Examiners grates against common sense and the rights of the applicant (e.g. to amend under Art. 123(1) EPC). The Applicant cannot accurately predict what prior art will be raised nor what specific features end up distinguishing the invention from this art. It is also worth remembering that inventive step is often evaluated differently under national laws in national proceedings; dependent claims to specific embodiments may be useful in these proceeding.

C-III 7.8 states the following about the unity of dependent claims:

“If, however, the independent claim appears not to be patentable, then the question whether there is still an inventive link between all the claims dependent on that claim needs to be carefully considered [non-unity “a posteriori”]. It may be that the “special technical features” of one claim dependent on this non-patentable independent claim are not present in the same or corresponding form in another claim dependent on that claim.”

This, however, must be balanced with the guidance in the previous section (C-III 7.7):

Although lack of unity may arise a posteriori as well as a priori, it should be remembered that lack of unity is not a ground of revocation in later proceedings. Therefore, although the objection should certainly be made and amendment insisted upon in clear cases, it should neither be raised nor persisted in on the basis of a narrow, literal or academic approach.This is particularly so where the possible lack of unity does not necessitate a further search. There should be a broad, practical consideration of the degree of interdependence of the alternatives presented, in relation to the state of the art as revealed by the search report. If the common matter of the independent claims is well-known, and the remaining subject-matter of each claim differs from that of the others without there being any unifying novel concept common to all, then clearly there is lack of unity. If, on the other hand, there is a common concept or principle which is novel and inventive, then objection of lack of unity does not arise.

For determining what is allowable between these two extremes, rigid rules cannot be given and each case should be considered on its merits, the benefit of any doubt being given to the applicant.

In certain recent cases, possibly due to revised internal practice at the EPO in advance of the changes to Rules 62a and 63, this balance has fallen out of line.

Legal Balance

T 1394/04, which is cited in C-VI 5.2, is useful case to cite in responses to redress this balance:

As a general principle it was held in T 708/00 that “a subsequent amendment to limit the subject-matter of the main claim by additional features disclosed in the application as filed does not generally affect the notion of unity of invention under either Rule 86 (4) or Rule 46 (1) EPC” and that “it is normal for an applicant to make such an amendment in respect of an objection to the patentability of the subject-matter in unlimited form” (T 708/00, headnote III). [Reasons – 3.]

In T 274/03 it was however made clear that certain conditions have to be satisfied for an amendment not to generally affect the notion of unity of invention. Thus, this
notion is not affected, and therefore no post-search switching of subject-matter is involved by the amendment, if for instance features are added from the description to further define an element that was already a feature of the original main claim (see [T 274/03]), to further specify an essential aspect of the original main claim. [Reasons – 3.]

In fact, as decision T 274/03 clearly demonstrates, if it is assumed, as is usually the case, that the original main claim contains at least in very broad terms the general inventive concept of the invention as set out further in the dependent claims, if any, and in the description, then it is certainly possible to determine whether later amendments form part of said general inventive concept, quite independently of the question whether the subject-matter of the main claim lacks novelty. [Reasons – 6.]

The example under point 5 elucidates that situations may actually occur where the amendment of the main claim, whose subject-matter lacks novelty, based on features supported exclusively by the description, may affect the notion of unity of the invention. Although such situations occur very rarely in practice, as already noted above, in such cases Rule 86 (4) EPC would have to be applied in order to avoid a possible circumvention of Article 82 EPC. [Reasons 6.]

In the present case however it is clear that, much the same way as in the decision T 274/03…the introduced amendment…merely constitutes a further specification of original features of the claim which are essential to the invention… as it appears particularly from the published patent application, column 1, lines 15-18 and lines 31-42. Consequently, [the features of the amendment] are to be regarded as being part of the constructional measures which are necessary to implement [the originally claimed features]. [Reasons – 7]

I believe it is also worth reminding the Examiner(s) that the dependent claims necessarily contain all the features of the independent claim(s) on which it depends. In certain unity objections, the features of the dependent claims are taken in isolation, contrary to the teachings of T 1394/04 above.

If anyone has had similar experiences or has found useful arguments or case-law to keep the EPO on track please “share with the group”.

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