Date: 1 January 2012
Exceptions to the Rule on independent claims.
Under Rule 43(2) EPC (introduced in 2002), 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 permitted exceptions listed in the Rule:
a plurality of inter-related products;
b. different uses of a product or apparatus;
c. alternative solutions to a particular problem, where it is not appropriate to cover those alternatives by a single claim.
The EPO has stated that this Rule underscores and legally defines the principle of one independent claim per category and the only exceptions to the principle are now explicitly stated in the rule. It has also stated that an applicant wanting more than one independent claim in the same category will have to convincingly demonstrate that any additional independent claims come under one of the exceptions given in Rule 43(2). The EPO has given examples of things that will be considered to fall within the exceptions listed in Rule 43(2). Examples of exceptions permissible under Rule 43(2)(a) EPC are: a plug and socket; a transmitter and receiver; intermediate and final products; and a gene, a gene construct, a host, a protein and a medicant. Permissible exceptions under Rule 43(2)(b) EPC are in particular second or further medical use in the format of a second medical use claim. Finally, typical permitted exceptions under Rule 43(2)(c) EPC are two or more processes for the manufacture of a chemical compound, in inventions relating to a group of new chemical compounds.
Despite the strict Rule, there remains significant scope for protecting a complex invention in its different aspects. Draftsmen should make full use of the identified allowed exceptions (inter-related products (Rule 43(2)(a)); different uses of product or apparatus (Rule 43(2)(b)); and different solutions to a particular problem (Rule 43(2)(c)). Examples in the chemical and biotechnology fields are listed above. Additional categories of note in the electronics field include so-called "Beauregard" claims (claims to a computer on a medium such as a floppy disk) as allowed by the EPO's Technical Boards of Appeal in T935/97 and T1173/97, signal claims as allowed in T463/85 and functional data claims as allowed in T1194/97.
Presenting independent claims to obtain full protection for an invention conforming to the EPO's ideal of just one claim in each category is likely to expedite prosecution and avoid automatic objections, but may not provide complete protection for the invention. Here are some strategies for continuing to obtain full protection in European Patent Applications, including presenting multiple independent claims if so desired or alternatively filing separate applications.
If there genuinely are several inventions to be claimed (for example each solving a different problem in the prior art), consider filing separate applications from the outset or dividing the application before examination begins. Filing separate applications from the outset can give a cost saving, because there is no official fee for the first 15 claims of each application. Filing separate applications from the outset may be preferable to filing a large number of claims and being forced to divide later, especially if the claims are so diverse that the Search Division is likely to require clarification before conducting a search (Rule 63 EPC as amended on 1 April 2010).
Sunday, January 1, 2012