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.

 

Comment

 

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.

 

Practice Note

 

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.

 

• Draft broad, generic claims encompassing all desired embodiments of the invention.
• Use all the claim categories available (product, process, apparatus, use).
• Identify all the novel inter-relating elements of the invention and claim them independently. Include a statement of invention in a summary of the invention portion of the specification introducing the independently claimed invention with an explanation of its justification for falling into one of the allowed exceptions.
• For example, write "According to a first aspect of the invention a first inter-related product is provided in the form of a computer terminal that interfaces with a network, comprising . . . , and according to a second aspect of the invention a second inter-related product is provided in the form of one or more computer servers that interface with the aforementioned or similar terminals, comprising . . . ".
• If an inter-related element to be claimed is not novel, claim its use in a novel system.
• If no novel generic solution can be identified to the notional technical problem presented by the prior art, explain in the specification that the different embodiments are different solutions to a common technical problem and claim them separately. Rule 43(2) permits independent claims to different solutions only where it is not appropriate to claim the solutions in a single claim.
• There is no outright prohibition on use of the word "or" and simple alternatives can be combined disjunctively in a single claim. Indeed, such an approach can assist the examiner in understanding that there are multiple solutions to a common technical problem and can prompt the examiner to request that they be claimed in independent claims. However excessive or tortuous use of "or" is likely to lead to a lack of clarity objection under Article 84.
• Don't forget there is no limitation on the allowable number of claims that depend on claims in the same or another category, e.g. "A system comprising the server of claim 1 in communication with a terminal . . .", or "A method of operating the apparatus of claim 1, comprising . . . ", or "A computer program product directly loadable into the memory of a computer, comprising software for performing the steps of claim 1 when run on the computer."

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).