Unity (patent law)
The unity of an invention claimed for patenting is one of the prerequisites for a patent application to be granted. In colloquial terms, the criterion requires that a patent may only protect one invention.
Legal basis
In German patent law, the uniformity requirement is anchored in Section 34 (5 ) of the Patent Act. In European patent law, unity is required in Art. 82 EPC .
Regulatory content, ratio
The result of the unity criterion is that the scope of protection of a patent is a single invention and not a bundle of more or less divergent aspects. The requirement of uniformity has two systematic justifications: Classification and searchability: Inventions are classified in order to be searchable. If several inventions were protected in one patent, the classification would be more difficult and thus the development of knowledge desired by the patent system would be worse. Fiscal aspects: Patents are charged with fees from the applicant or patent owner. On the one hand, they are collected for claims made by the patent offices. On the other hand, the annual fees - which increase over the years - have an ordering effect in that it must be considered annually whether the fee should be paid, so that unnecessary rights at some point in the absence of fee payment before the max. possible term expire and thus the legal landscape is cleaned up. both of these effects would work worse if several inventions could be protected in one patent.
Problem definition, criterion
What a patent is specifically intended to protect is contained in the patent claims formulated in the application . A patent application can have several independent patent claims. As a result, it can happen that objectively diverging inventions are also claimed. The question of whether several inventions are claimed in a patent application (it is “inconsistent”) is therefore not determined by the overall content of the patent application, but by the content of its patent claims . As a rule, the problem of lack of uniformity arises when there are several independent patent claims that point in factually different directions. Objectively different directions exist when the different claims have to be argued differently compared to the prior art, i.e. they do not have a common inventive concept.
Procedure in the event of inconsistencies
The complaint of lack of uniformity will sooner or later be raised by an examiner and communicated to the applicant. Viewed macroscopically, the applicant then has three alternatives:
- He can argue against the complaint that it was wrongly raised. In the event of success, the complaint will be dropped. In the following, however, it is assumed that the complaint persists. It is then an obstacle to patentability.
- He can delete the inconsistent patent claims by deleting them completely or, if the facts permit, only formulating them in combination with the basic aspects.
- In addition to 2. above, a divisional application or divisional application can be submitted that deals with the inconsistent aspect.
German patent law
In the German patent granting procedure, an examiner is required during the substantive examination, e.g. B. in the first examination notification, if necessary, inform the applicant that he considers the claims to be inconsistent and that certain aspects must be deleted or, if they are to be pursued further, eliminated. The applicant may file a divisional application in response to such a complaint. Without a previous examiner's complaint about a lack of uniformity, he can submit a divisional application to cover the inconsistent aspects.
European patent law
In the EP procedure, (extended) search and examination are separate steps. If an examiner finds inconsistencies in the claims during the search for the first-mentioned invention, he or she will prepare a partial search report for the first-mentioned invention and request one or more additional search fees for the parts that are considered to be inconsistent. If they are paid, the other inconsistent aspects are also researched. If they are not paid, only the first-mentioned invention will be researched. In the later examination procedure, the objection to inconsistencies can be argued against. In the event of success, the further search fee will be refunded.
When checking after the search, only the first-mentioned invention can be checked and, if necessary, patented. A divisional application may have to be submitted for the other aspects.
In its Examination Guidelines, the EPO dedicates Chapter 7 to the process around the question of unity in Part B.