|European Case Law Identifier:||ECLI:EP:BA:1988:W003288.19881128|
|Date of decision:||28 November 1988|
|Case number:||W 0032/88|
|IPC class:||G01N 33/58|
|Language of proceedings:||FR|
|Download and more information:||
|Title of application:||-|
|Applicant name:||not published|
|Headnote:||An invitation to pay an additional fee on the grounds that an international application concerning a process and an apparatus relates to two different inventions whereas the apparatus is specifically designed for carrying out the process has no legal basis, even if the claims for the apparatus are not restricted to such use.|
|Relevant legal provisions:||
|Keywords:||Apparatus specifically designed for carrying out a process
Process - apparatus
Apparatus - other applications
Summary of Facts and Submissions
I. The applicants filed international patent application ....
II. The Hague branch of the European Patent Office as International Searching Authority (ISA) for this application sent the applicant an invitation to pay an additional search fee on the grounds of lack of unity between the following claims: 1 to 5 concerning a method of immunoassay; and 6 to 16 concerning a Fourier transform IR spectroscopy apparatus.
III. The applicants paid the required fee, within the time limit fixed by the notice, under protest in accordance with Rule 40.2(c) PCT and applied for reimbursement of the fee. In the reasons given in support of their protest the applicants explained that the claims of the application formed a single general inventive concept since Claims 6 to 16 concerned an infrared spectroscopy apparatus specifically designed for carrying out the process (infrared immunoassay) according to Claims 1 to 5 and thus complied with the unity of invention requirements of Rule 13.2(ii) PCT.
Reasons for the Decision
1. The protest complies with Rule 40.2(c) PCT and is therefore admissible.
2. Under Rule 40.1 PCT the invitation to pay must specify "the reasons for which the international application is not considered as complying with the requirement of unity of invention".
3. In the present case, on examination of the independent Claims 1 and 6, it could be understood from the reference to two inventions in the invitation that the grounds for raising an objection of non-unity of the application were that the spectroscopy apparatus to which Claims 6 to 16 relate was not exclusively designed for carrying out the immunoassay process to which Claims 1 to 5 relate but could be used for other purposes and, for these applications, did not form a single general inventive concept with the process. This at least is how the applicants have interpreted it, as is clear from their arguments in support of the protest. The Board consequently considers that in this instance the reasons given in the invitation to pay, though brief, are sufficient, if interpreted in this way, to meet the requirements of Rule 40.1 PCT.
6. However, these reasons, unsupported by any other arguments, are not enough in themselves to establish that the international application does not comply with the requirement of unity of invention. Indeed Rule 13.2(ii) PCT clearly states that a process and an apparatus specifically designed for carrying out the process are covered by the same general inventive concept without any other conditions. It is obvious moreover that the existence of other possible applications for the apparatus cannot logically destroy the link existing in such a case between the two inventions. Consequently an invitation to pay an additional fee for the sole reason that the international patent application concerning a process and an apparatus relates to two distinct inventions whereas the apparatus is specifically designed to carry out the process has no legal basis, even if the claims relating to the apparatus are not limited to such use. The applicants' request for reimbursement of the additional search fee must therefore be granted.
For these reasons, it is decided that:
The additional fee paid under protest is to be reimbursed.