Unity of Invention in Selected Countries

February 13, 2003
HARAKENZO World Patent & Trademark Patent Law Firm
Foreign Department General Manager, Takamasa ARAI

1. The United States

According to the Manual of Patent Examining Procedure of the United States,
(a) independent (mutually unrelated) and
(b) distinct (being patentable over each other, such as a process and a product, and a process and an apparatus) inventions may not be claimed in one application (MPEP 802).
However, if the examination of an application can be made without serious burden, restriction requirement may not be made for otherwise patentable inventions claimed in one application (MPEP 803).

The following are examples of the categories of inventions that may be claimed in one application:
1. Inventions of a product and a process of making the product, if the process cannot be employed to produce a different product;
2. Inventions of a product and a process of using the product, if the process cannot be employed to use a different product;
3. Inventions of a process and an apparatus or means, if the apparatus or means cannot be used to carry out a different process.
4. EPC
The European patent application shall relate to one invention only or to a group of inventions so linked as to form a "single general inventive concept" (EPC, Article 82).

According to the Implementing Regulations to EPC, Rule 30(1), where a group of inventions is claimed in one and the same European patent application, the requirement of unity of invention referred to in Article 82 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features.

The following are examples of the categories of inventions that may be claimed in one application:
1. A product, one process suitable for manufacturing the product, and one use of the product;
2. A process and an apparatus for carrying out the process; and
3. A product, a process of manufacturing the product, and an apparatus for carrying out the process.
In the case where it is considered that an application lacks the unity of invention, the applicant will be inquired whether or not to request for an additional search. In order to request for the additional search, the applicant must pay the additional search fees.
An advantage of the additional search is that, in the case where the invention (or group of inventions forming unity) first mentioned in the claims is found to be unpatentable, it is possible to proceed, without requiring a divisional application, with respect to one of the inventions (or groups of inventions forming unity) for which the additional search has been made.
4. China
Two or more inventions may be included in one application only if they are related with each other by a single general concept (Chinese Patent Law, Implementing Regulations Rule 35(1)). It is required that the inventions to be included have one or a plurality of the same or common particular technical features (i.e. technical features that contribute to the existing techniques when plural inventions are taken collectively).

The following are examples of claims that may be included in one application:
1. Independent claims respectively claiming a product and a process exclusively for manufacturing the product;
2. Independent claims respectively claiming a product and a process of using the product;
3. Independent claims respectively claiming a product, a process exclusively for manufacturing the product, and a process of using the product;
4. Independent claims respectively claiming a product, a process exclusively for manufacturing the product, and a facility designed for carrying out the process (here, the wording "designed for" does not mean that the product may not be manufactured by another process.);
5. Independent claims respectively claiming the same kind of products or processes (i.e. products or processes to be claimed in the same type of independent claims) that may not be claimed in one
claim; and 6. A process and a facility designed for carrying out the process.
5. Taiwan
According to Article 31 of the Taiwanese Patent Law, if two or more inventions cannot be separated in practical use, such inventions may be claimed in one application under any of the following circumstances:
1. In the case of the utilization of the major constituent features of an invention;
2. In the case of an invention covering an article, the application may simultaneously claim other inventions relating to the process of manufacturing the article, the process of utilizing the article, and the machines, devices
or apparatus for manufacturing the article or other articles in which the specific feature of the article is utilized; and
3. In the case of an invention claiming a process, the application may simultaneously claim inventions relating to the machines, devices or apparatus to be directly used in practicing the process.
6. Korea
In order to obtain a patent, one separate patent application should be made for each invention. However, a group of inventions forming a single inventive concept can be included in one application (Korean Patent Act, Article 45(1)).

Any of the following applications shall be deemed to have met the requirement of unity of invention (Korean Patent Act Enforcement Decree, Article 6(1)):
(i) An application describing an independent claim relating to a product or process;
(ii) If the application includes an independent claim relating to a product, an application selectively or collectively describing independent claims relating to a process for handling the product, a product solely utilizing the specific properties of the product, a machine, instrument or equipment, other products for manufacturing the product, or a product for handling the product; or
(iii) Where the application includes an independent claim relating to a process, an application describing an independent claim relating to a machine, instrument, equipment, or other products for direct use in working the process.