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A Unified Approach to Unity
The EPO has recently published an advanced preview of the new Guidelines for the Examination which will come into force on 1 March 2021. This advanced preview gives Applicants and Representatives some time to review the guidelines and digest any changes in approach that the EPO may be taking.
One of the changes in the new guidelines is the unity section. Unity is one of the areas that the EPO has identified that could benefit from further harmonisation between the EPC member states and overall EPO practice. It is therefore no surprise that some further clarification of the guidelines in this regard have been issued.
Previously, the EPO employed a two-step test for considering whether a set of a claims is unified. The first step in this test was:
(1) Determining, in the light of the application as a whole, the subject-matter that is common to the claims directed to the different claimed inventions, i.e. the technical features of these claims that are the same and/or corresponding
That is, as a first step an overall review of the claims was carried out to identify what matter, if any, was shared between each of the claims. The second step of the test was then:
(2) Examining whether any of this common matter is special within the meaning of Rule 44(1) EPC.
Rule 44(1) EPC essentially sets out that claims will be deemed to be unified if there are one or more corresponding special technical features. The expression “special technical features” essentially means features which are novel and define an inventive contribution over the prior art. That is, each of the claims must share the same corresponding novel and inventive features over the cited prior art.
In the updated guidelines, the EPO has effectively maintained this test but they have separated it further into three steps as follows:
(i) Determining, in the light of the application as a whole, the common matter, if any, between the claims of the different claimed inventions;
(ii) Comparing the common matter with the “prior art at hand” to examine whether the common matter makes a contribution over that prior art, namely whether it comprises “special” technical features within the meaning of Rule 44(1);
(iii) If the common matter does not comprise special technical features, analysing any remaining technical features which are not part of the identified common matter to determine if there is a unifying technical relationship among some of the claims.
The first two steps are essentially the same and the updated guidelines provide some further examples of these steps in action.
The third step of the test explicitly sets out what had become standard EPO practice. Once the claims are determined to non-unified, the Examiner will consider what technical features are in the claims so that they can be suitably grouped. This is performed on the basis of the technical problems associated with the technical features of each of the claims. So a series of claims relating to improvements in one aspect of the claimed invention may be grouped separately to those improving a separate aspect of the claimed invention.
This assessment is carried out by the EPO in order to determine whether any additional search fees are due. Particularly, if the set of claims relate to a number of separate technical problems, then one or more further search fees may be requested so as to have the entire claim set searched. Under European practice, it is impermissible to amend the claims to include unsearched subject-matter. It is therefore important that any subject-matter which the Applicant may want to proceed with is searched as there is no opportunity to have it searched at a later date without filing a divisional application. Therefore, this grouping of the claims by the Examiner can have a significant impact on the further prosecution of a European patent application.
While this has been standard practice at the EPO for many years, it is useful for Applicants and Representatives to see this practice reflected in the Guidelines for Examination.
While the above represents the EPO expanding upon and clarifying their existing practice, there is a significant addition in Section F.V, 3.3.1 of the updated Guidelines for Examination. This section sets out the minimum requirements for the reasoning that an Examiner is expected to provide when raising an objection under a lack of unity. It appears that this may be provided for the EPC member states to pass on to their own national Examiners. This may be particularly useful for Applicants filing priority applications in one of the EPC member states before filing a European or PCT application to have unity assessed in a consistent manner between the member states and the EPO. Of course, there is nothing to make any of the EPC member states enforce these minimum requirements and the extent to which they do will become apparent over the coming months and years. With EPO Examiners and hopefully national Examiners applying this minimum reasoning, Applicants should be able to fully understand why they are receiving objections of a lack of unity and respond accordingly.
In summary, the updates to the unity section of the Guidelines for Examination appear to essentially restate and clarify existing processes, along with a useful minimum justification requirement. If you have any questions regarding how the updates to the EPO Guidelines for the Examination may affect you, please contact your usual Boult Wade Tennant LLP advisor.