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Just got an extended European search report with Unity rejection, stating that the the application does not meet the requirement of unity according to Article 82 EPC, the reason being as follows:
independent claims does not involve an inventive step within the meaning of Article 56 EPC.

On this condition, I would like to know if I could just amend the independent claims to aovid obviousness and argue with the Office by stating that the instant application does involve unity because the amended independent claims possess inventive step?

Below is an extract from the EESR.

  1. Unity
    1.1 The present application deos meet the requirement of unity according to Article 82 EPC, the reasons being as follows:
    The subject matter of claims 1 and 12 does not involve an inventive step within the meaning of Article 56 EPC (see detailed reasoning below in points 3.1 and 3.2). Strating from document D1 as the prior art within the meaning of Rule 44(1) EPC, the dependent claims 2 to 11 and 13 to 19 do not introduce a same or corresponding special technical feature.

Then the Office started specifying the technical features of each group of claims.

In summary, the dependent claims 2 to 19 either do not provide an further contribution over the prior art or they introduce different special technical features which do no correspond as regards their technical effect.
Hence, the technical relationship between the subject-matter of said claims required by Rule 44 EPC is lacking, and the requirement for unity of invention referred to in Article 82 EPC is not fulfilled.

Then

1.8 Hence, the following separate inventions or groups of inventions are not so linked as to form a single general inventive concept: ... ...

1.9 In accordance with Rule 164(1) EPC, the supplementary European search report has been drawn up for those parts of the application which relate to the invention, or group of inventions, first mentioned in the claims.
Since no additional search fee has been paid upon invitation for the other invention(s) (Rule 164(1) EPC), the application will be prosecuted on the basis of the invention in respect of which a search has been carried out, in other words the invention first mentioned in the claims.
The applicatn is therefore inventied to limit the application to the invention covered by the supplementary European search report and excise those parts of the application relating to the other invention(s).
The subject-matter to be excised may be made the subject of one or more divisional applications according to Rule 36 EPC.

Thank you!

  • 1
    Could you give a little more information? Either the full report if it's already published or at least some of the explanations without disclosing anything crucial? I'm not sure here if every claim is rejected by 56 EPC and then by 82 EPC too so essentially 56 EPC is what to deal with first or by 82 EPC with some quoting of 56 EPC only. – DonQuiKong May 9 '17 at 8:58
  • In principle, if you have two mutually exclusive claims which are dependent on the same independent claim, and that independent claim lacks an inventive step, then the dependent claims lack unity with respect to each other. But I have never seen an examiner bother raising that, since it's a minor consequence, rather than something needing to be explicitly dealt with. So there surely must be something more than merely the independent claim lacking an inventive step. So I agree with @DonQuiKong: the EESR (or an extract from it) would assist mightily. – Maca May 9 '17 at 10:41
  • You received an extended european search report so I assume it is an EP direct application and not a PCT entering the EP phase. Did you receive a communication pursuant to Rule 64 inviting you to pay further search fees? It is very odd that the reason provided for non-compliance with Article 82 is non-inventiveness (Article 56). Are you sure this is exactly what it reads? I agree with the other two comments, a short extract from it would help understand what the communication actually asks you to do. – chempatent1981 May 9 '17 at 12:05
  • Thank you all. I've quoted some of the explanations from the EESR. Hope it be helpful. – J. Gong May 10 '17 at 3:02
  • Just to confirm: did you previously receive an invitation to pay additional search fees, and then decide not to pay for claims 13-19? Because that makes quite a substantial difference in your options. – Maca May 10 '17 at 3:39
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From the above I come to the conclusion that the unity objection is raised because claim 1 was found non-inventive (non compliance with Art. 56) and therefore the single general inventive concept exists no more for the depended claims 2-11 (I assume they were dependent to 1). Same goes for (independent?) claim 12, which is considered to lack inventive step, hence the claims dependent to 12 lose their unity as well.

Check also the guidelines for examination for unity https://www.epo.org/law-practice/legal-texts/html/guidelines/e/b_vii.htm and for the search opinion https://www.epo.org/law-practice/legal-texts/html/guidelines/e/b_xi.htm

I am afraid there is not much left to do with respect to unity. You received a Rule 164(1) communication which provided you with a time limit to pay further search fees. Since you received the supplementary european search report (ISA was not the EPO, right?), the time limit under R.164(1) has expired and apparently you did not pay any further search fees.

In principle, you may challenge a unity objection, but to do so, you must have paid the further search fees and request a refund during the substantive examination, providing relevant arguments (Guidelines part B, Chapter VII/2.1). Since you have not paid any further search fees, you cannot do that.

What can you do now?

You can continue prosecution on the basis of those claims that have been searched. You are not supposed to use subject matter from parts of the application not searched to proceed to amendments, as the communication states to you (R.137(5)). However, if you want to challenge the unity objection, you could request for a decision with respect to this matter (e.g. allowing you to amend with unsearched subject matter, because the non-unity finding is not right), which is appealable. And then file an appeal. If the application is refused for violation of R.137(5) you can also appeal (because refusal is a decision) and challenge the non-unity objection (which prevents you from amending using unsearched subject matter). There is some relevant case law at the EPO (http://www.epo.org/law-practice/legal-texts/html/caselaw/2016/e/clr_ii_b_6_2_1.htm), but whether or not you stand a chance rests on the characteristics of your case.

The more simple way is to pursue unsearched subject matter with a divisional application. It probably is cheaper than paying for an appeal and a good Eur. Patent Attorney to prepare and file the appeal.

All the above assuming that you wrote correctly Supplementary European Search Report, which means it is a PCT application entering the EP phase and EPO was not the ISA.

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