W 0006/90 (Single general concept) of 19.12.1990

Summary of Facts and Submissions

I. On 11 September 1989 the applicant filed international application PCT/EP 89/01 054 with 16 claims. Claims 1, 7 and 8 read as follows:

"1. Artificial hip joint, characterised in that it consists at least partially of a hollow component which is open at the side.

7. Artificial hip joint, characterised in that the prosthesis is in the form of a straight shaft prosthesis and, viewed from the side, has an S-shaped mass distribution, the centre of gravity of the prosthesis cross-sections lying, in the proximal portion, dorsally and, in the distal portion, ventrally in relation to the prosthesis axis.

8. Artificial hip joint, in particular according to any one of Claims 1 to 7, characterised in that the head of the prosthesis is adjustable one-, two- or three-dimensionally, its adjustability in each direction preferably being independent." (Emboldening added.)

II. On 22 January 1990 the European Patent Office, as the competent International Searching Authority, invited the applicant to pay an additional search fee under Article 17(3)(a) and Rule 40.1 PCT, stating that the application did not, in the Office's view, meet the requirement for unity of invention according to Rule 13.1 PCT. The reasons given were that the application contained not only a first invention relating to the stem of an artificial hip joint as referred to in Claims 1 to 6, 7, and 9 to 16, but also a second invention relating to the adjustability of the head of an artificial hip joint as referred to in Claim 8. The inventive concept of the two independent Claims 1 and 7 was to adapt the mass distribution of the stem of the artificial hip joint to the deformability of the bone. According to Claim 1 this was done by using a hollow component and according to Claim 7 by using an S- shaped stem. Claim 8, on the other hand, related to a prosthesis head which was adjustable one-, two- or multidimensionally. Since the adjustable head described in Claim 8 could be used to the same effect without the stems described in Claims 1 and/or 7, the subject-matters of the respective claims were not linked by a single general inventive concept, which meant that there was an a priori lack of unity.

III. On 21 February 1990 the applicant paid the additional search fee under protest and requested reimbursement. In the applicant's view, Claim 8 was based on the same general inventive concept as Claims 1 and 7, i.e. to design the prosthesis to achieve the optimum force transfer and hence reduce bone deformation. It was immaterial whether the prosthesis according to Claim 8 could be used to the same effect independently of the prostheses according to Claims 1 and 7 or whether an even greater improvement in the force transfer would be achieved by combining the features of Claim 8 with the prostheses according to Claims 1 and 7. The application accordingly complied with the requirement for unity of invention according to Rule 13.1 PCT.

Reasons for the Decision

1. Under Article 154(3) EPC the Boards of Appeal are responsible for deciding on the protest made by the applicant.

2. The protest complies with the requirements of Rule 40.2(c) PCT and is therefore admissible.

3. With regard to the criteria for judging unity of invention (Rule 13 PCT) when carrying out a search, the following considerations apply:

3.1 Under Rule 13.1 PCT an international application must relate to one invention only or to a group of inventions so linked as to form a single general inventive concept ("requirement of unity of invention"). A lack of unity may either be evident a priori from the skilled person's own general knowledge i.e. before the claims have been considered in conjunction with the state of the art established during the search, or may become evident only a posteriori in the light of the prior art.

3.2 When seeking to establish at the search stage whether inventions comply with the requirement of unity, the first question to be considered is whether the inventions are linked by a single general concept. Such a concept manifests itself in features common to different teachings expounded individually in the same application. It must, however, be borne in mind that a teaching for the purposes of patent law encompasses not only the immediate subject-matter representing the solution to the problem as defined in the relevant claim, but also its technical consequences which are expressed as effects. Any subject-matter is defined by structural features and the relationship between them. The relevant effects, i.e. the outcome or results achieved by the invention as claimed, will usually be apparent already from the problem as stated. A single general concept may therefore be said to be present only if a partial identity exists among the teachings in an application deriving from the structural features of the subject- matters claimed and/or the outcome or results associated with those subject-matters.

Rule 13.2 PCT gives examples of combinations of subject-matters defined in independent claims of different categories which are so linked as to form a single general concept under Rule 13.1 PCT. These examples in Rule 13.2 PCT of what is meant by the abstract term "single general concept" corroborate the observations just made. For example, the subject-matters referred to in Rule 13.2(i) PCT (a product, a process specially adapted for the manufacture of the said product, and a use of the said product) embody a single general concept because, on the one hand, the partial identity between the product and its use derives from the structural features of the product and, on the other hand, the partial identity shared by the product and the process specially adapted for its manufacture derives also from the product which is to be considered as the effect or result of this process (cf. T 119/82, "Gelation/EXXON"; OJ EPO 1984, 217, point 11).

Where subject-matters of the same category are concerned, a partial identity, generating unity of invention, can result from the structural features of these subject-matters and/or their associated effects. The absence of such an element common to all the different teachings in the application, and hence a lack of unity, may be established a priori under certain circumstances. A lack of unity may, however, also be established a posteriori between the subject-matters of different independent claims or in the remaining subject-matters if the subject-matter of a linking claim is clearly not novel or inventive vis-à-vis the state of the art.

3.3 For the purposes of unity of invention, Rule 13.1 PCT also stipulates that the single general concept must be inventive. Even with a given single general concept there is lack of unity if the concept has no inventive character. As the applicant has no opportunity to present his comments during the search, a lack-of-unity objection based on a finding that a single general concept formed by a group of claimed subject-matters is not inventive should be made by the search examiner only in clear cases, cf. Enlarged Board of Appeal decision G 1/89 "Polysuccinate esters" dated 2 May 1990 (OJ EPO 1991, 155, point 8). According to that decision also, an assessment of whether a single general inventive concept exists is to be undertaken only insofar as this is necessary to establish whether the invention complies with the requirement of unity when implementing the procedure laid down in Article 17 and Rule 40 PCT. Such an assessment is provisional and does not constitute a substantive examination in the sense of an examination as to patentability. Before issuing an invitation to pay an additional search fee on the basis of lack of unity, the search examiner must accordingly demonstrate that, given the general knowledge of the person skilled in the art (a priori) or the state of the art - as revealed by the search -relating to the subject-matter first defined in the claims (a posteriori), the substance of the single general concept can evidently contribute nothing to the inventive step.

3.4 The criteria governing unity of invention for the purposes of Rule 13.1 PCT elucidated above also apply in principle where the inventive step is based chiefly on the discovery of an unrecognised problem (cf. T 2/83, "Simethicone Tablet/RIDER", OJ EPO 1984, 265 "Problem invention"). If the common problem, i.e. the effects to be achieved, was itself already known or could be recognised as generally desirable (a mere desideratum) or obvious, there would be no inventive merit in formulating the problem. If the common structural features are to be found only in the prior art portions of the claims, and if these known features do not help to solve the problem of the combined whole, this may also indicate a lack of unity.

3.5 Neither the above interpretation of the vague legal term "single general inventive concept" nor the corroborating examples listed in Rule 13.2 PCT are exhaustive; in the Board's view, however, this interpretation is in line with the practice that has evolved until to date.

4. Having examined the applicant's protest at the European Patent Office's action in charging an additional search fee based on an a priori lack of unity finding and in the light of the considerations set out above, the Board's conclusions are as follows:

4.1 According to page 3 of the description the invention is based on the problem of developing a prosthesis which allows reproducibly good results to be achieved in terms of incorporation and capacity to withstand strain.

4.2 In his submission of 20 February 1990 the applicant maintains that the single general inventive concept linking the inventions of Claims 1 and 7, on the one hand, and the invention of Claim 8, on the other, resides in the fact that the prosthesis is designed to achieve optimum force transfer and hence reduce bone deformation.

4.3 The Board concludes, in the light of the considerations set forth in 3.3 and 3.4 above, that this single general concept demonstrated by the applicant is prima facie and a priori not inventive. It is common knowledge amongst skilled persons that when developing and designing prostheses, which conventionally have to have good properties in terms of both incorporation and capicity to withstand strain, it is important to try to achieve the evenest possible force transfer to the prosthesis and/or bone and to reduce or avoid bone deformation. It is well known that bone deformation results in surface dislocation and hence in bone resorption, which may cause the prosthesis to come loose (cf. p. 2 of the description). The desired effects of the inventions are therefore known of themselves and cannot be deemed inventive. The Board, therefore, cannot accept the grounds advanced by the applicant as evidence of unity of invention.

4.4 Even if account is taken not only - as in 4.2 and 4.3 - of the effects and mere desiderata to be achieved but also of the structural features of the independent Claims 1 and 7, on the one hand, and Claim 8 on the other, the case for unity of invention is still without merit. In the Board's view - and according to the description (cf. in particular pp. 4, 6, 8 to 10 and 15) - the concept on which the subject-matters of Claims 1 and 7 are based and which might be considered inventive a priori, i.e. without taking account of the state of the art as ascertained, is to be seen in the structural features involving the adaptation of the mass distribution of the prosthesis to the areas in which the main stress occurs and to the deformability of the bone. By contrast, the subject-matter of Claim 8, at least insofar as it does not refer back to previous claims, is based on the concept of designing the prosthesis head adjustably to achieve an "exact alignment of the head of the prosthesis with, and the transfer of force to, the sacroiliac joint" for patients of different shapes and sizes (cf. pp. 7 and 17 of the description). These two concepts manifest themselves in totally different features with no common element and so do not meet the requirement of point 3.2. The inventions of Claims 1 and 7, on the one hand, and Claim 8, on the other, are therefore not so linked as to form a single general inventive concept.

5. The international application accordingly does not comply with the unity-of-invention requirement of Rule 13.1 PCT and the invitation of 22 January 1990 to pay an additional search fee was justified for that reason.

ORDER

For these reasons it is decided that: The protest is dismissed. The additional search fee shall not be reimbursed.