W 0008/87 (Protest) vom 14.12.1987

1. In case it should become manifest that the subject-matter of an independent claim lacks novelty, a posteriori non-unity may arise from the fact that, through combination of this claim with existing dependent claims, new independent claims are created which do not relate to a group of inventions so linked as to form a single general inventive concept within the meaning of Rule 13.1 PCT.

2. However, the mere enumeration of the various inventions defined in such new independent claims, together with the statement that these inventions no longer form an inventive unity, does not comply with the requirements of Rule 40.1 PCT, according to which the reasons for the finding that a non-unity like this exists must be given in the invitation to pay additional search fees provided for in Article 17(3)(a) PCT. Thus, the invitation contravenes Rule 40.1 PCT read in conjunction with Rule 13.1 PCT and is, therefore, not legally binding with respect to the aforementioned lack of unity a posteriori.