Unity of invention under the European Patent Convention

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Under Article 82 EPC, a European patent application must "...relate to one invention only or to a group of inventions so linked as to form a single general inventive concept." [1] This legal provision is the application, within the European Patent Convention, of the requirement of unity of invention, which also applies also in other jurisdictions. [2]

Contents

The lack of unity or non-unity (of invention), can appear either a priori, i.e., before taking into account the prior art, or a posteriori, i.e., after taking into account the prior art. An a posteriori lack of unity usually results from a lack of novelty or inventive step of the subject-matter of one independent claim.

Unity amongst a group of inventions

When a European patent application claims a group of inventions, "unity of invention" is considered present if "...there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features." [3] There are 3 approaches that EPO examiners used in practice, and they all focus on an idea of a single general inventive concept, which usually can be equated with an inventive step. [4]

Search phase

If, when carrying out a search, the search division considers that the application lacks unity (i.e., it doesn't meet the provisions of Article 82), a partial search report is established. [5] The EPO then requires one or more further search fees for the other identified inventions, or groups of inventions, that the search may cover. [5]

The former time limit for paying the further search fees was a period the EPO specified as between two weeks and six weeks. [5] Under new Rule 64 EPC, in force as of April 1, 2010, [6] the time limit for the further search fees is now two months. [7]

Interactions between search and examination phases

Responsibility for establishing whether or not a European patent application meets the requirements of unity of invention ultimately rests with the examining division. [8]

Therefore, the findings of the search division—that the application lacks unity—may be contested before the examining division, during the examination phase. If successful, and if further search fees were paid during the search phase, the further search fees may be refunded. [9] If successful, and if further search fees had not been paid during the search phase, "...the applicant is entitled as of right to have the whole subject-matter of his unitary invention searched." [10]

Examination phase

Under the former version of Rule 36 EPC, an objection of lack of unity of invention raised in a communication of the Examining Division could trigger a 24-month period for filing a divisional application, if the particular objection was raised for the first time. However, under the amended version of Rule 36 EPC which came into effect in April 2014, divisional applications can be filed at any time provided that the parent European application is still pending. [11]

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<span class="mw-page-title-main">European Patent Office</span> One of the two organs of the European Patent Organisation

The European Patent Office (EPO) is one of the two organs of the European Patent Organisation (EPOrg), the other being the Administrative Council. The EPO acts as executive body for the organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative body. The actual legislative power to revise the European Patent Convention lies with the Contracting States themselves when meeting at a Conference of the Contracting States.

<span class="mw-page-title-main">European Patent Convention</span> International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

In most patent laws, unity of invention is a formal administrative requirement that must be met for a patent application to proceed to grant. An issued patent can claim only one invention or a group of closely related inventions. The purpose of this requirement is administrative as well as financial. The requirement serves to preclude the possibility of filing one patent application for several inventions, while paying only one set of fees. Unity of invention also makes the classification of patent documents easier.

<span class="mw-page-title-main">Representation before the European Patent Office</span>

The European Patent Convention (EPC), the multilateral treaty providing the legal system according to which European patents are granted, contains provisions regarding whether a natural or juristic person needs to be represented in proceedings before the European Patent Office (EPO).

There are four overriding requirements for a patent to be granted under United Kingdom patent law. Firstly, there must have been an invention. That invention must be novel, inventive and susceptible of industrial application.

This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

T 258/03, also known as Auction Method/Hitachi, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on April 21, 2004. It is a landmark decision for interpreting Article 52(1) and (2) of the European Patent Convention (EPC) which built on the principles suggested by the same Board in T 641/00. This decision, amongst others, but notably this one and T 641/00, significantly affected the assessment of an invention’s technical character and inventive step.

Double patenting is the granting of two patents for a single invention, to the same proprietor and in the same country or countries. According to the European Patent Office, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention. However, the threshold for double patenting varies from jurisdiction to jurisdiction.

<i>Aerotel Ltd v Telco Holdings Ltd</i>

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T 641/00, also known as Two identities/COMVIK, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on September 26, 2002. It is a landmark decision regarding the patentable subject matter requirement and inventive step under the European Patent Convention (EPC). More generally, it is a significant decision regarding the patentability of business methods and computer-implemented inventions under the EPC.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

T 1173/97, also known as Computer program product/IBM or simply Computer program product, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on July 1, 1998. It is a landmark decision for interpreting Article 52(2) and (3) of the European Patent Convention (EPC) and whether computer programs are excluded from patentability under the EPC.

Article 84 of the European Patent Convention (EPC) specifies that the "matter" for which patent protection is sought in an application - the purported invention - shall be stated ("defined") in the claims. This legal provision also requires that the claims must be clear and concise, and supported by the description. The function, form and content of the claims are defined by Article 84 supplemented by Rule 43 EPC.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.

Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia involve an inventive step. The central legal provision explaining what this means, i.e. the central legal provision relating to the inventive step under the EPC, is Article 56 EPC. That is, an invention, having regard to the state of the art, must not be obvious to a person skilled in the art. The Boards of Appeal of the European Patent Office (EPO) have developed an approach, called the "problem-and-solution approach", to assess whether an invention involves an inventive step.

During the grant procedure before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC out of pending earlier European patent applications. A divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the earlier application, unless specific provisions in the European Patent Convention (EPC) require something different. A divisional application, which is divided from an earlier application, cannot be broader than the earlier application, neither in terms of subject-matter nor in terms of geographical cover.

G 1/11 is a decision issued on 19 March 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that a Technical Board of Appeal rather than the Legal Board of Appeal is competent for an appeal against a decision of an Examining Division refusing a request for refund of a search fee under Rule 64(2) EPC, which has not been taken together with a decision granting a European patent or refusing a European patent application. In other words, the decision deals with the delimitation of competence between the EPO's Legal Board of Appeal and its Technical Boards of Appeal.

References

  1. ↑ Article 82 EPC
  2. ↑ Wendler, Michael; Tremml, Bernd; Buecker, Bernard John (5 June 2013). Key Aspects of German Business Law: A Practical Manual. Springer Science & Business Media. p. 239. ISBN   978-3-540-24776-0.
  3. ↑ Rule 44(1) EPC
  4. ↑ Jeremy R.M. Scott , Sytse de Jonge. "When is a search not a search? Part 2 – Non-unity, the EPO approach" World Patent Information 30 (2008) 199–205. 10.1016/j.wpi.2009.08.004
  5. 1 2 3 Rule 64(1) EPC
  6. ↑ Decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 3/09), Article 2(1).
  7. ↑ Decision of the Admin. Council, CA/D 3/09, Article 1.3.
  8. ↑ Decision J 3/09 of the Legal Board of Appeal of 28 May 2010, Catchword 1. Decision T 1285/11 of the Technical Board of Appeal 3.3.01 of 15 December 2011, Reasons for the Decision, 3.1.
  9. ↑ Rule 64(2) EPC
  10. ↑ Decision T 1285/11 of the Technical Board of Appeal 3.3.01 of 15 December 2011, Reasons for the Decision, 3.1, 5th paragraph.
  11. ↑ Rule 36 EPC
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