Unity of the invention
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.” 24.Art.82 and unity of invention may be considered only during the prosecution of a patent application. If an objection is raised by the Search or Examining Division of the EPO the applicant is invited to delete the relevant parts of the specification to meet the objection. The applicant may then file one or more divisional applications, paying the appropriate fees, including further search fees where necessary. Ensuring that the EPO is not stinted on fees is presumably one of the policy considerations behind the requirement of unity of invention in art.82, possibly the main reason for it. 25.Rule 44 EPC defines the requirement of unity under that art.82: “(1) Where a group of inventions is claimed in a European patent application, the requirement of unity of invention under 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 expression ‘special technical features’ shall mean those features which define a contribution which each of the claimed inventions considered as a whole makes over the prior art. (2) The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.” 26.The general inventive concept of art.82 is an overarching relationship between two or more inventions in a single European patent application, involving one or more special technical features in common. 27.The inventive concept discussed in Yeda, Actavis and Pozzoli is part of a single invention. Guiding metaphors have been used to signal what this means: the inventive concept has been described as the core, the essence and the heart1 of the invention. In Regen Lab SA v Estar Medical Ltd [2019] EWHC 63 (Pat), I suggested that in Actavis the Supreme Court had in mind the new technical insight conveyed by the invention (at [222]). 28.Those who drafted art.82 and rule 44 EPC had in mind a ‘general inventive concept’ which is not similar to the inventive concept contemplated by the House of Lords in Yeda.
Whether the inventive concept may be found outside the claims 29.Markem Corp v Zipher Ltd [2005] EWCA Civ 267; [2005] RPC 31 was concerned with a UK patent application and thus s.8 of the 1977 Act. The inquiry under s.8 is whether a person other than the applicant is entitled to be granted a patent for the invention claimed in the application. This requires identification of the ‘invention’ of s.8, or what Lord Hoffman later characterised in Yeda as ‘the inventive concept’. Jacob LJ said that the inquiry is not limited to looking at the claims: “[101] Accordingly, we think one is driven to the conclusion that s.8 is referring essentially to information in the specification rather than the form of claims. It would be handy if one could go by the claims, but one cannot. Section 8 calls for identification of information and the rights in it. Who contributed what and what rights if any they had in it lies at the heart of the inquiry, not what monopolies were actually claimed.”
The jurisdiction of the court in relation to a European Application 30.Mr Davis made the point that the relief which the court or the comptroller may order under s.12 of the 1977 Act is limited. Section 12 on its face gives the tribunal a discretion as to the appropriate relief (see s.12(1)). But once the national court has decided the question of entitlement, the consequences that follow are solely the preserve of the EPO and determined by rules 14 to 18 and art.61 EPC. 31.In brief, subject to a time limitation and provided the EPO has not in the meantime granted the patent, if the national court decides that the patent application should be transferred to another party, that other party can (a) prosecute the application as his own, (b) file a new application or (c) request that the application is refused. If the other party is entitled to part of the patent application, it can pursue any of options (a) to (c) in relation to that part. If the national court decides that the existing applicant should retain ownership entirely, the EPO will resume the proceedings for grant. 32.I must reach a view as to which party is entitled to the Application, but I have no jurisdiction over what should happen to the Application as a consequence.
Whether the court may consider validity 33.In Markem the Court of Appeal considered whether the tribunal may determine the validity of the claims of a patent in proceedings solely concerned with rival assertions of entitlement to the patent. Jacob LJ said: “[87] This brings us to the next point. Mr Watson submits that under s.8 the validity of the patent is completely irrelevant. The only question is: who is entitled? Mr Thorley accepted that s.8 proceedings cannot turn into a full-scale inquiry into validity in a difficult case but that where an unanswerable case of validity was raised, the Comptroller can act upon it. He drew an analogy with proceedings for amendment of a patent where a roving inquiry into validity is not permitted but one can inquire as to whether a proposed amendment dealt with the reason advanced for making it, Great Lakes Carbon Corp's Patent [1971] R.P.C. 117. [88] We have no doubt that Mr Thorley is right. If the patent or part of it is clearly and unarguably invalid, then we see no reason why as a matter of convenience, the Comptroller should not take it into account in exercising his wide discretion. The sooner an obviously invalid monopoly is removed, the better from the public point of view. But we emphasise that the attack on validity should be clear and unarguable. Only when there is self-evidently no bone should the dogs be prevented from fighting over it.”