Assessment of unity of invention

Combinations of claims of different categories or of interrelated products

6.52 Generally, unity will extend to claims of different categories or of interrelated products related to the same inventive concept, where the claims have corresponding special technical features. The term “interrelated” means different objects that complement each other or work together. Some of the following are examples of where this will be a consideration, and are based on the guidance given in the examples in 10.20-10.59 of the PCT Guidelines.

6.53 Example 1:

In the following example, despite the claims relating to different articles, they relate to the same inventive concept which provides them with unity. Similarly, there may also be unity between different articles provided they are specifically adapted to have a working inter-relationship. For example, the claims are:

1. Plug characterised by feature A.
2. Socket characterised by having an aperture designed to receive feature A.

In this case, the plug and socket interact in operation using the feature A, and are interrelated products. This inventive concept therefore provides unity between the two different articles.

This would also be the case with separate claims directed to two parts of an electrical or other coupling, or to a housing and to contacts to be mounted in the housing, provided they were specifically adapted for one another and have no further obvious application. In particular, separate claims may be justified to parts which may be manufactured or sold separately, such as a rupturable container of fuel and a burner specifically adapted to pierce the container when mounted on it; or a container of chemicals to be sprayed which is specifically adapted to be mounted on a carrier, and such a carrier specially adapted for receiving the container; or to a new form of cable and to a sheath stripper particularly adapted to deal with this cable.

6.54 Example 2:

In most cases, an article or product per se will be the special technical feature in common between different aspects of the invention. For instance, in the following example, the compound of Formula X will be the common feature of the claims:

1. A compound of formula X.
2. A herbicidal composition comprising the compound of Formula X as defined in Claim 1, comprising …
3. A method for preparing the compound of Formula X as defined in claim 1 wherein …
4. The use of the compound of Formula X as defined in Claim 1 as a herbicide …

6.55 Example 3:

In the biotechnology area, this may extend to different embodiments related to the same inventive concept even though they are distinct entities. For example, in the case of a gene and protein, claims in a single application may include the protein, the use of the protein, nucleic acids encoding the protein, vectors comprising the nucleic acid, transgenic organisms etc. For example,

1. An Fc binding protein, containing amino acids at positions 35 to 90 of an amino acid sequence described in SEQ ID NO: 1.
2. A polynucleotide, encoding the Fc binding protein according to claim 1.
3. An expression vector, containing the polynucleotide according to claim 2.
4. A transformant obtained by transforming a host with the expression vector according to claim 3. 5. A method for manufacturing an Fc binding protein, comprising culturing the transformant according to claim 4 to produce the Fc binding protein; and recovering the produced Fc binding protein from its culture.

In this case, the protein is the unifying inventive concept. In the case of nucleic acids, unity may exist between the nucleic acid and antisense even though they are different structurally.

6.56 Example 4:

In the case of processes and apparatus, unity will generally rely on the apparatus being “specially adapted” for use in the specific process. In order to be considered as specially adapted, the claim must define the apparatus in a manner that clearly embodies the inventive features of the process.

1. Process of preparing Compound X comprising the steps of:

(a) In a first reactor, selectively hydrogenating Compound Y using catalyst Z;
(b) In a second reactor, selectively oxidising the product of step (a) using permanganate under elevated pressure of at least 5 atmosphere.

2. Apparatus specially adapted for use in the process of Claim 1.
3. Use of Compound X for …

If the apparatus has been defined to be specially modified in such a way as to provide the inventive outcomes of the process (automation, operatively linked, catalysts, pressure system, etc.), the appatratus is considered “specially adapted” for use in the process. The claims would have unity in such cases.

However, if the apparatus is defined in a way that merely requires that it is capable of carrying out the process, the claim would not sufficiently embody the inventive concept and an objection of lack of unity may be applicable. Novelty may also be an appropriate consideration in this case since the arrangement of reactor vessels may be interpreted in such a way as to have no distinguishing features over and above the prior art.

It should also be noted that the construction of claims directed to apparatus “specially adapted” needs to be dealt with on a case-by-case basis (sub-section vii of Section F in Chapter 2).