Is it possible defend unity objection with amendments

Question

Let's say claim 1 is not novel and claim 2 is novel and unity objection is posteriori and next independent claim (claim 3) defines a system comprises a device according to any of preceding claims. If I add claim 2 to claim 1,do I have to still delete claim 3?

Ps:I dont want to file divisional and case is for Ep.

Claim 1 is fibre (not novel) and claim 2 is dependent and is about sub feature of fibre (like density of etc) and is novel and claim 3 defines textile product comprise fibre of claim 1 + another feature. Claim 1 and 2 has no unity problem.

Answer 1

If claim 1 is not novel it can’t be an independent claim so combining it with limitations that are novel is required.

The EPO does allow multiple independent claims for different aspects of an invention. An example is a device, a system built around that device, a method of making the device and a method of using the device.

Properly drafted that could apply to a fiber and a fabric made from the fiber or a method of making the fabric.

If the fabric is only unique because if the special fiber, there is only a single inventive concept. If, on the other hand, the fabric is unique for a reason unrelated to the specific fiber, then you are trying to patent two inventions in one application.

If you truly have two inventions but only want to pursue one patent you will need to think about design around, what kind of entity would infringe, how you can detect infringement, who you would license and other commercial factors to decide which invention gives you the biggest commercial value.

Answer 2

Unity of invention is defined in Article 82:

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.

Regarding the independent claims Rule 43 (2) apply:

Without prejudice to Article 82, a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the subject-matter of the application involves one of the following:

(a) a plurality of interrelated products,

(b) different uses of a product or apparatus,

(c) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim.

Rule 64(1) defines what happens if the application lacks unity:

If the European Patent Office considers that the European patent application does not comply with the requirement of unity of invention, it shall draw up a partial search report on those parts of the application which relate to the invention, or the group of inventions within the meaning of Article 82, first mentioned in the claims. It shall inform the applicant that, for the European search report to cover the other inventions, a further search fee must be paid, in respect of each invention involved, within a period of two months. The European search report shall be drawn up for the parts of the application relating to inventions in respect of which search fees have been paid.

Rule 137 (1) defines, that:

Before receiving the European search report, the applicant may not amend the description, claims or drawings of a European patent application unless otherwise provided.

If I understood the question right, the following claims we filed:

1. independent claim - invention 1 - not novel
2. depending on claim 1 - invention 1 - novel
3. independent claim - invention 2

In this case, the EPO according to Rule 64 sends you a partial search report regarding invention 1 with an invitation for paying an additional search fee for the unsearched invention 2.

2 months after the invitation, a European search report will be drawn up for the inventions for which search fees have been paid.

Before receiving a search report, the applicant may not amend, see Rule 137(1).

In other words, unity is checked before a search report is drawn up. Amendments are only possible in response to Search/Examination reports. (see rule 137(1) and (3))