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Issues to consider when preparing claims for your European patent application

A myriad of issues can arise in relation to the claims of a European patent application, as explained in our full guide here. Below is a summary of four key issues that arise frequently when prosecuting claims at the EPO that originate from a patent application in a different jurisdiction. These are:

  • Excess claims fees
  • Basis for claim amendments
  • Unity of invention
  • Plurality of independent claims

Excess Claims Fees

Excess claims fees are payable to the EPO for each claim over fifteen and the fees are relatively expensive compared to other countries. However multiple claim dependencies are permitted in Europe, which can be used to help reduce the claim count.

The number of claims does not have to be addressed prior to entry into the European phase. There is a period after entry into the European regional phase for paying excess claims fees and filing amendments to the claims to reduce/avoid excess claims fees. However this period is often prior to substantive examination of the claims by the EPO and so the applicant is often voluntarily filing these claim amendments without specific objections having yet been raised by the EPO examiner.

Basis for Claim Amendments

Any amendments made to the claims or description must not go outside the scope of the application as originally filed, and basis for the amendments must be clearly indicated to the EPO. In the case of a Euro-PCT application, “the application as originally filed” is the PCT application.

If the Examining Division notes a failure to meet either requirement, it may request the correction of this deficiency within a period of one month. When any claim amendments are submitted to the EPO, the accompanying comments must explicitly state where the amendments have basis in the application as originally filed.

The EPO is strict about what constitutes sufficient basis for claim amendments and ‘added-matter’ objections are raised frequently. Often examiners are looking for explicit, word-for-word basis for claim amendments.

Whilst implicit disclosures of features within the application text must also be considered during assessment of basis for amendments, examiners are critical of the boundaries of any such implicit disclosure and will often resist amendments that amount to mere generalisation of a more-specific feature disclosed in the description or claims.

One example of this is referred to as ‘intermediate generalisation’. This is where a specific feature is only described in combination with other features in the application and the applicant attempts to isolate that feature to insert into a claim, or else claim that feature in combination with different features. The examiner will assess not only whether there is basis for the claim wording used to define the individual feature but also whether there is basis for the combination of that feature with the other features of the claim. In some instances, the examiner will insist that the requirement for sufficient basis requires a feature imported into a claim to be accompanied by additional features that were disclosed in combination with it in the application as originally filed.

Unity of Invention

In Europe, an objection of lack of unity of invention can be raised at either the search or the examination stage. See Article 82 EPC: 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.

If an objection concerning unity is raised in a supplementary European Search Report on a Euro-PCT application, a partial supplementary search report will be drawn up on those parts of the application which relate to the invention first mentioned in the claims.  Whilst one or more additional search fees may subsequently be paid in order to have one or more further inventions searched, there is no opportunity to have just one invention searched unless that is the invention “first mentioned in the claims”.

Prior to the search being performed by the EPO, it may therefore be important to make sure that the claims relating to the subject matter of greatest importance are listed first.

A common occurrence is that the Search Division will find a lack of unity a posteriori. That is to say, it will find the inventive concept common to all embodiments covered by Claim 1 to lack novelty, and therefore that those embodiments are not “so linked as to form a single general inventive concept”. The search examiner will then review the claims to identify the invention “first mentioned in the claims”. This may be the embodiment defined by a dependent claim, or it may the embodiment first mentioned in a dependent claim that lists several embodiments as alternatives. Note that this analysis by the search examiner is conducted without reference to the applicant or its representative. It is therefore important when amending the claims to pay attention not only to the order in which independent claims are set out, but also the order in which dependent claims are presented, and the order in which alternatives are presented within any one dependent claim.

Plurality of Independent Claims

Under Article 84 EPC, there is a general requirement for claims to be “concise”. EPO examiners have always interpreted this to mean not only that an individual claim must be concisely worded, but also that the claim set as a whole should be concise.

This was used as a ground for objection to cases in which claim scope was mapped out by a plurality of overlapping independent claims. Rule 43(2) EPC provides a more explicit basis for such an objection:

(2) Without prejudice to Article 82 [unity of invention], a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the subject-matter of the application involves one of the following:

(a) a plurality of interrelated products,

(b) different uses of a product or apparatus,

(c) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim.

This means that the EPO examiner will typically object to the presence of two independent claims of the same type (e.g. two independent product claims or two independent method claims) unless one of options (a)-(c) are met. Option (a) can be invoked as justification for inclusion of several product claims, e.g. a plug-and socket, a transmitter-and-receiver, or a novel compound, an intermediate useful in the synthesis of the compound, a pharmaceutical composition comprising the compound etc. Option (c) can sometimes be used to justify the use of a plurality of claims directed to alternative embodiments of an invention, rather than a single claim that might be unduly convoluted and therefore not itself “concise”.

If an objection of this type is raised by the Search Division, the EPO will provide an opportunity for the applicant to select the claims to be searched. Note that the applicant is not given the opportunity to amend the claims at this stage. Instead, the applicant must select the claim of each category that is to be searched (and those selected claims must meet the requirement of unity discussed above).

Unless the Examining Division later considers that the objection was unjustified, the application must be limited to the searched subject matter and unsearched subject matter may not be reintroduced into the application at a later date. The unsearched subject matter can only be pursued through one or more divisional applications.

In cases where multiple independent claims relate to significantly different subject matter, it is often difficult to predict whether a unity objection or an objection against the number of independent claims will be raised. The effects of these two objections are different, and it is therefore important to amend claims appropriately before the application is searched to limit the likelihood of either of these objections being raised.

A fuller explanation of the above points is provided in our detailed guide here.

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