T 0110/82 (Benzyl esters) of 8.3.1983

Summary of Facts and Submissions

I. European patent application No. 79 101 242.0, filed on 25 April 1979 and published on 23 January 1980 under publication number 0 006 978, claiming priority from the German prior application of 5 May 1978, was refused by decision of the Examining Division of the European Patent Office dated 1 April 1982. That decision was based on the 13 claims in the submission dated 7 April 1981 and received on 21 April 1981.

II. In that decision - for which no grounds were stated - it was found that the application related to five different inventions and did not therefore fulfil the requirements laid down in Article 82 and Rule 46(1) EPC. The five different subject-matters of the invention were evidently regarded as being constituted by the benzyl esters of the formula I (see formula) and their intermediates, such as the benzyl alcohols of the formula III (see formula) the benzyl halides of the formula V (see formula) the aldehydes of the formula VI (see formula) and the benuyl amines of the formula VIII (see formula) Without dealing with the significance of the radicals in detail, it should be stressed - in order to provide a better understanding of this decision - that, at all events, R1 stands for fluoroalkoxy or fluoroalkyl mercapto, or that two neighbouring radicals, together with the adjacent C atoms, form oxygen-containing heterocyclic five- or six-membered rings substituted by one or more fluorine atoms R2 is hydrogen, C1-4 alkyl, cyano or ethynyl R3 are radicals of the formula (see forumula) R4 and R5 are chlorine or bromine.

III. By letter of 13 May 1982 the appellant lodged an appeal against this decision of 1 April 1982 on 15 May 1982, the fee for appeal also being paid on the latter date. The Statement of Grounds was submitted on 9 July 1982. The appellant observed that, since no grounds had been stated for the alleged lack of unity of the application, he could only resort to conjecture. Presumably the Examining Division had viewed the application as lacking unity because it covered both intermediates as well as the products of their further processing and their properties as active substances. However, all these compounds shared a common structural feature; since the structure of chemical substances represents one of their characteristics, the claimed substances exhibited a common characteristic irrespective of whether one or more stages were involved in transforming the intermediates into the subsequent products, thus representing a single general inventive concept as required by Article 82 EPC. That apart, Rule 30(c) EPC determining the interpretation of Article 82 showed that a product, the process for the manufacture of the product and a means for carrying out the process are to be seen as having unity, irrespective of whether product and means possess the same properties. Furthermore, the public expected that the application, filed on one day and published in this form, and containing all essential information on the active substances and their intermediates, be protected by one and not by several individual patents, for reasons of legal certainty. Since the patentability of the intermediates was, in any case, founded on the unexpectedly superior properties of the end products, divisional applications would merely lead to an increase in the administrative burden on the granting authorities, without any recognisable benefits to the public. Further, the question of unity of invention of intermediates and end products prepared therefrom had in the meantime been settled positively by a ruling of the chemical Board of Appeal. The appellant requested that the decision impugned be set aside and that the patent sought on the basis of the patent claims received on 21 April 1981 be granted, taking into account the request dated 8 November 1982.

Reasons for the decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.

2. There can be no objection to the present version of the claims on formal grounds, since it is adequately supported by the original documents (cf. claims 1 to 10, 13 and 14 in conjunction with the description, page 16, whole of the first paragraph).

3. On the question of unity of inventions relating to intermediate products and end products, the Board has already stated its position in the "Copolycarbonates" decision (OJ 8/ 1982, p. 306), and has ruled that such inventions have unity if they are technically inter-connected and are integrated into a single overall concept by being oriented towards the end products. In the decision it is stated that the specific function of the new intermediates as elements of the end products should not be disregarded when assessing the unity criterion (in point 4). The Board based its decision solely on Article 82 EPC, without regard to the provision of Rule 30(c) EPC, which in the view of the appellant is applicable to a patent application claiming both intermediate and end products. The cited decision concerned the preparation of new heterocyclic aromatic copolycarbonates (end products) as well as the preparation for that purpose of the new dihalogenated carboxylic acid esters of certain heterocyclic sugar alcohols (intermediates) capable of producing the desired end products in a single-stage reaction with (known) aromatic diphenols, optionally with the use of phosgene. In this reaction the proportion of heterocyclic components originating from the intermediate product was 5 to 50 mol% based on the total quantity of carbonate structural units of the high-molecular end product.

4. If, therefore, the joint handling of low-molecular intermediates and high-molecular end products does not give rise to any misgivings with regard to Article 82 EPC, which provides for the consideration within a single European patent application of several inventions linked to form a general inventive concept, then there does not seem to be any valid argument in principle against the co-existence in the same application of intermediates and end products both in the low- molecular field. There are admittedly differences between the two fields, inasmuch as intermediates are generally the only key to the generally single-stage preparation of polymers and polycondensates, whereas low-molecular end products are obtainable by a multiplicity of mostly multi-stage syntheses via numerous intermediates; but since in the former case for the purpose of unity the area surrounding the high-molecular product can be fully covered by the intermediate product, there are in the latter case no objections in principle against partially covering the area surrounding low-molecular products.

5. It should be borne in mind, however, that as the disparity between intermediate and end product increases - as is possible in the purely low-molecular field - their technical inter- connection becomes increasingly tenous, eventually becoming purely coincidental. A single general inventive concept within the meaning of Article 82 EPC exists only if a group of claimed inventions still retains a minimum degree of ready comprehensibility. This is in itself required in the interests of a rational procedure up to grant, in which interconnected matter should not be needlessly split up nor non-related inventions lumped together for the purpose of saving fees. Particular significance is attached to the requirement as to ready comprehensibility of a group of inventions from the aspect of information on filed applications and existing patents. This is essential to allow competitors to inform themselves readily on the existing situation regarding protective rights and so that the technical knowledge contained in the applications is made available quickly and reliably in the form of patent documentation. Finally, the equitable levying of fees is an aspect which should not be disregarded. The procedure up to grant is financed by the fees levied. It would be infair to regard as having unity of invention those applications which, because of their heterogeneous content, entail a far greater than average expense in the procedure up to grant, especially in respect of search, since this expense must partly be borne by the fees levied for other applications.

6. In summary it follows that the "Copolycarbonates" decision on the unity of inventions relating to intermediate products and end products can also be applied to inventions in the purely low- molecular field, providing that a sufficiently close technical interconnection is evident and the regulatory function of Article 82 EPC is taken into due account (prohibition of unjustified saving of fees, need for ready comprehensibility).

7. If this criterion for assessment is applied to the group of inventions here under discussion, it becomes apparent that the direct intermediates for the desired benzyl esters, namely the benzyl halides of the formula V and the benzyl alcohols of the formula III, as well as the three possible intermediates for the benzyl alcohols, namely the benzaldehydes of the formula VI, the benzyl amines of the formula VIII and the benzyl halides of the formula V (cf. process claim 5c), contain the common structural element (FORMULA) This element is incorporated in one or at most two reaction stages into the molecule of the benzyl esters according to the formula I by way of the intermediates. The structure is not sufficiently unrelated to that of the end product as to warrant regarding the inter-connection of the individual intermediate/end product pairs as too tenuous. The intermediates (benzyl alcohols, benzyl halides, benzyl amines and benzaldehydes) claimed in addition to the end products (benzyl esters) are therefore an element of the benzyl ester molecule and introduce an important structural element into the end products. Intermediates and end products thus form a complex overall invention, the constituent parts (intermediates) of which are sufficiently closely technically inter-connected and integrated into a single overall inventive concept by being oriented towards the end products. This is not prejudiced by the fact that a different task can be formulated for the intermediates than for the end products, for the orientation of the intermediates towards the end products permits the individual problems addressed by the intermediates to be combined into a unitary overall problem, to whose solution the purpose-made intermediates contribute.

8. As indicated in point 5, the prohibition of needless subdividing of a complex invention and the general principle of dealing with inter-connected substantive issues within a single procedure would fail in their objective if the regulatory function of the provision relating to unity is overstrictly applied to the detriment of the other aspects mentioned. This does not apply here, although it should be emphasised that in this respect the present case is close to being a borderline one.

9. Here the Board was guided by the following consideration. Rule 46(1) EPC authorises the Search Division to assess provisionally the unity of the invention; this means that after finding a lack of unity the search can be limited to the subject- matter first mentioned in the claims. In the present case the Search Division has made use of this right; it regarded as having unity the subject-matter directed to the benzyl esters of cyclopropane carboxylic acid derivatives and preparation and use of these substances as described in claims 1, 2, 13 and 14, and carried out searches on this subject-matter in no less than five subject areas designated in the International Patent Classification (Int. Cl.). The six subject-matters which it regarded as lacking unity were identified in detail and the overall subject-matter of the application was classified under 17 Int.Cl. symbols. As the Int. Cl. classes vary in size, this numerical comparison cannot provide an assessmentof the actual quantity of search work, but it is obvious that search work will be multiplied if the whole invention is regarded as having unity. The fees due to the European Patent Office, the search fees being one example, are levies for services rendered by the Office. This reflects the principle (Article 40(1) EPC) that the European Patent Office must be self-financing (cf. Singer, Das neue Europäische Patentsystem, 1st edition, Baden-Baden, Nomos Verlagsgesellschaft 1979, 96). As regards revenue, it cannot be expected that, upon payment of a single fee, searches be carried out for any number of groups of inventions within an application. On the other hand, the strict subdivision of an application as proposed in the decision impugned would entail a whole series of other (related) fees for each divisional application, and these fees would substantially exceed the additional search fees. Although considerations relating to revenue are not foremost when assessing unity of invention, they are designed to help prevent unjustified saving of fees; such is not the case here - particularly as part of the subject-matter of the invention has been split off.

10. In the present case the requirement as to ready comprehensibility also appears to have been fulfilled, as shown by the analysis made in point 9. The constituent parts of the invention identified by means of multiple classification are clearly presented to the Office and to the interested public and permit meaningful documentation and information as well as ready searching in respect of the complex invention claimed.

11. The aspect, pleaded by the appellant, of the public's right to find information on a group of inventions in a single patent specification does not necessarily take precedence over the above principles.

12. Claims 2, 4, 6, 8 and 10 directed to the manufacture of the intermediates and end products and Claims 11 and 12 relating to certain insecticides and the use of benzyl esters in pest control need not be dealt with in any detail since, unity of invention having been established for the intermediates and end products themselves, processes for their preparation and use also have unity, under the terms of Rule 30(a) EPC.

13. The Examining Division based its decision to refuse the application on Article 82 and, incorrectly, on Rule 46(1) EPC. This Rule, a directive for the Search Division, is the legal basis for the drawing up of a partial European search report and for notifying the applicant of any further search fee to be paid; the Rule can not, however, be used by the Examining Division for the purpose of refusing an application.

14. From the foregoing it follows that the decision impugned cannot be upheld. However, the patent sought cannot be granted at present, because a full search has not so far been carried out and the first instance has not yet assessed whether the intermediates conform with the requirements for patentability.

ORDER

For these reasons, it is decided that:

1. The decision of the Examining Division of the European Patent Office dated 1 April 1982 is set aside.

2. The case is remitted to the first instance for further substantive examination on the basis of the twelve patent claims received on 21 April 1981, taking into account the request dated 8 November 1982.