Review of Approach to Grouping Inventions to Meet the Unity Requirement

Modifications according to Order No. 107 of the Ministry of Economic Development dated February 21, 2023

The Ministry of Economic Development's Order No. 107 of February 21, 2023, introduced amendments to the rules for drafting, submitting, and reviewing documents, which are the basis for legally significant actions regarding the state registration of inventions. These changes include requirements for applications and the procedure for ensuring compliance with the unity of invention requirement.

Previously, when applying for patents that included several objects in the claims such as a product and its manufacturing method, or a device and a component part of that device, or even a product and its new use, it was sufficient to only refer to an independent claim that linked these objects.

A New Approach to the Unity of Invention Requirement

According to the new approach, the mandatory requirement for recognizing a group of inventions as meeting the unity requirement is the presence of a technical interrelationship between the inventions. This interrelationship must be expressed through one or more common or corresponding special technical features, detailed in each independent claim.

At the technical interrelationship between inventions is defined as a condition for grouping inventions, where only those inventions that include special distinguishing technical features from the prototype can be grouped together. "Technical features" refer to characteristics of technical objects and living entities modified by human activity.

Special technical features include identical (content-wise matching) or corresponding (mutually complementing and forming a functional unity) technical features that distinguish each invention from its closest analog. These features, in conjunction with other distinguishing characteristics, contribute to the technical advancement made by each grouped invention.

For simplicity, examples of corresponding technical features include an aluminum guide profile for sliding a closet door in one invention of the group, and a seal inserted into this profile in another invention of the group. Another example could be the hardness of a steel disc in one invention of the group, and the process stages for obtaining the steel disc with such hardness in another invention.

This article examines new approaches to grouping inventions under a unified inventive concept, as well as the reasons and objectives for these changes in the regulatory framework.

Reasons for changes to the Requirements

The old clause 2 of the Requirements had a number of shortcomings, in particular, it did not establish the total number of objects of inventions that could be included in the group; there was uncertainty regarding the possibility or impossibility of combining combinations of established combinations in the claims; the object “use of a product or method for a specific purpose” is not demonstrated; the combination of objects “intermediate and final product” is not shown; the combination of “objects that complement each other” is not provided (for example, tenon-groove objects); a combination of “general” and “specific” technical solutions is not provided.

Having worked through the “gaps” mentioned above, the new rules introduced a two-stage verification of compliance with the requirement of unity of invention (before conducting an information search on the application and after), as well as new rules for combining inventions into a group, which also influenced the requirements for drawing up a claim in terms of possible combinations types of objects of invention, between which there is a technical relationship, and which can be included in the claims, and their quantities.

Rules applicable to the claims in connection with amendments to the Requirements

The new rules applicable to the claims are presented in paragraphs 63, 64 and 65 of the Requirements.

Paragraph 63 reads: “Taking into account the requirement of unity of invention established by paragraph 2 of these Requirements, independent claims relating to objects of inventions of various types may be included in the claims in one of the following permissible combinations:

1. an independent claim for a product, an independent claim for a method intended for the manufacture (receipt) of this product, and an independent claim for the use of this product;
2. an independent claim for a product, an independent claim for a method intended for the manufacture (obtainment) of this product, and an independent claim for a product developed to implement this method;
3. an independent claim for a method and an independent claim for a product developed to implement this method or one of its actions;
4. an independent claim for the method and an independent claim for the product intended for use in the method;
5. an independent claim for the product and independent claims for the use of this product."

Paragraph 64: “Taking into account the requirement of unity of invention established by paragraph 2 of these Requirements, the claims may include two or more independent claims relating to objects of invention of the same type, in one of the following permissible combinations:

1. independent claims characterizing variants of the invention related to objects of the same type (for example, several devices, several substances), the same purpose, ensuring the same technical result;
2. an independent claim characterizing the subject of the invention as a whole, and an independent claim characterizing a part of the whole;
3. an independent claim characterizing the subject matter of the invention in general, and an independent claim characterizing a particular case of the invention;
4. independent claims characterizing the intermediate and final products;
5. independent claims that characterize the objects of the invention, complement each other and interact in the process of operation.”

Paragraph 65: “The claims may include a combination of one of the combinations of claims given in clause 63 of these Requirements with one or more combinations of claims given in clause 64 of these Requirements.”

Thus, the requirement of unity of invention will be considered met if the inventions described in the independent claims of the invention are combined into a group of inventions in compliance with the provisions of paragraphs 2 and 63, 64, 65 of the Requirements for application documents, including the requirements for options, namely: the purpose of inventions, technical results and special technical features must coincide.

Purposes of changes to the Requirements

Moreover, if, as a result of checking compliance with the requirement of unity of invention, the expert establishes that the claimed inventions do not contain at least one identical or corresponding special technical feature of the invention that distinguishes each of the inventions from its closest analogue, as a result of which the inventions of the claimed group inventions cannot be recognized as having a technical relationship, the applicant will be sent a notice of violation of the unity requirement with a proposal to eliminate this remark in the response to the request.

Thus, legislators overcame the shortcomings of the existing regulation, satisfied business requests for the introduction of uniform rules for combining inventions into a group for national applications and for international applications transferred to the national phase, since previously applicants were faced with the need to divide a national application filed abroad claiming priority Based on the first application filed in the Russian Federation, the Russian rules for combining inventions into a group were brought closer to the rules established by the national legislation of other countries and regional legislation.