Assessment of unity of invention

Lack of unity a priori

6.21 Unity of invention requires that the claims have the same or corresponding “special technical features” that provide the contribution over the prior art. A lack of unity of invention a priori should be self-evident and an assessment can be made with little indepth analysis. A simple example of claims lacking unity a priori is as follows:

1. A + X
2. B + Y

6.22 There is a lack of unity a priori as there is no common or corresponding technicalfeature between the two independent claims. Similaly, the following three independent claims lack unity a priori as there is no subject matter common or corresponding to all claims:

1. A + X
2. A + Y
3. Y + X

6.23 An objection to lack of unity may be taken by grouping the inventions having a common special technical feature – in this case on the assumption that each of A, X and Y is a special technical feature, the claims are grouped as follows and each group is considered to constitute an invention:

Invention 1: A + X and A + Y (A is the special technical feature in common);
Invention 2: A + Y and Y + X (Y is the special technical feature in common);
Invention 3: A + X and Y + X (X is the special technical feature in common).

The examination report will be based on the first mentioned invention only.

6.24 In the following example, the two independent claims which have a common feature A may lack unity a priori when the common feature A is well known in the art. Before considering the prior art, it is clear that feature A is alreadly disclosed in the state of the art, and the ‘real’ inventions relate to features X and Y, respectively. An a priori lack of unity objection in such a circumstance supported by a reference to a citation may be raised, unless the feature A is so generic in the art that it requires no documentary evidence.

1. A + X
2. A + Y

6.25 In some cases the claims may be drafted in a manner that makes it difficult to identify the special technical feature. One approach to dealing with such cases is to consider the problem that the application addresses and how the application seeks to solve that problem. The solution will most likely be the general inventive concept which can be considered to be the special technical feature, and if this is present in all of the claims then there will be unity (sub-section v of Section D in this Chapter).

6.26 Complex claim sets, chemical intermediates and Markush claims also involve special considerations. These are discussed in later sections.