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Unity of Invention

General principles

6.11 Lack of unity is determined on the basis of the invention(s) as defined by the claims. An application may describe a number of different inventions having different inventive concepts, but an objection of lack of unity will only arise if the different inventions are claimed. Lack of unity can occur between different claims or within a single claim where said claim contains distinct embodiments which are not linked by a single inventive concept. When considering unity, the description and drawings may be taken into account when interpreting the claims to determine the invention.

6.12 Detailed reasons for the objection of lack of unity must be given in the report. Chapter 10 of the PCT Guidelines provides general guidance on how to determine whether there is a lack of unity. The examples at 10.20-10.59 provide a framework for certain technology-specific situations.

6.13 Lack of unity will be either “a priori”, that is, before considering the prior art, or may only become apparent “a posteriori” following a search of the prior art. All objections must be drafted following these principles.

6.14 The test for unity of invention may start from identifying common or corresponding technical features in the inventions claimed and determining whether the same or corresponding “special technical features” are present in all the claimed inventions.

6.15 If there are no common or corresponding technical features, then there is a strong indication that there is a lack of unity a priori. When there are common or corresponding technical features, there would be unity if the common or corresponding technical features are considered to be special technical features; on the other hand, if the common or corresponding technical features are not considered to be special technical features, there may be a lack of unity a priori or a posteriori.

6.16 If the common feature is disclosed in a P,X or E-category citation, it cannot be used to support an objection of lack of unity. The common feature must be made available to the public at the priority date of the application in order to support an objection of lack of unity.

6.17 In general, the initial consideration will be directed to the independent claims only. However, further consideration of dependent claims which depend on an independent claim may be necessary if the features defined in said independent claim are found in the prior art (see sub-section ii of Section D in this Chapter).

6.18 The following are some scenarios to illustrate whether a lack of unity objection should be raised among dependent claims:

a) In cases where an independent claim merely defines features that are part of the common general knowledge, and its respective dependent claims additionally define separate inventions, an objection of lack of unity may be raised among the dependent claims.

b) In cases where an independent claim is novel and inventive, then an objection of lack of unity should not be raised even when the dependent claims merely define trivial features that would be part of the common general knowledge.

c) In cases where an independent claim lacks novelty and/or inventive step and the dependent claims are closely interdependent (that is, they merely define specific embodiments of the invention claimed in the independent claim), then it may be more appropriate to assess novelty and/or inventive step instead of raising an objection of lack of unity to the dependent claims.

6.19 It should be noted that this is case dependent and a decision to raise an objection of lack of unity should take into account all circumstances specific to the case in hand (sub-section iii of Section D in this Chapter).

6.20 Alternative forms of an invention may be claimed in a single claim (Markush claims are an example). However, a lack of unity will arise if the alternatives within a claim result in there being no common special technical feature. Broad consideration should be given to the special technical feature – alternatives could be linked by different properties: this could be composition, structure, function or other manner.