Unity of Invention
The Main Points in Examination of
Pesticide Applications
M.Sc. Karina Volkov, Ph.D. Nina Korbakov
November 2013
Contents:
Part I. Unity of Invention.
I. Section 8 IL Patent Law.
II. Lack of Unity : “a priori”.
III. Lack of Unity : “posteriori”.
IV. Unity of invention. Particular Situations.
1. Markush formula.
2. Different categories of claim.
3. Process for preparation, intermediate and final product.
4. Compositions.
Part II. The main points in examination of methods and combinations for
controlling pests.
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Unity of Invention
Section 8 Israel Patent Law
A patent shall be granted for a single invention only.
Unity of invention exists only when there is a
technical
relationship
among
the
claimed
inventions involving one or more of the same or
corresponding special technical concepts.
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Unity of Invention
The expression “Special technical concept” is
defined as meaning those technical concepts
that define a contribution which each of the
inventions, considered as whole, makes over
the prior art.
Special technical concept of the invention must
involve Novelty and Inventive step over the
prior art.
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Unity of Invention
Lack of Unity “a priori”
Claim 1. A+B
Claim 2. A+C
Claim 3. B+C
There is no subject matter common to all claims.
A is common in claims 1 and 2, therefore Unity exists only for these claims.
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Unity of Invention
Lack of Unity “a priori”
Example.
Claim 1. A compound of formula (I)
(I)
Claim 2. A compound of formula (II)
(II)
Compounds (I) and (II) have not a common significant structural element.
There is lack of unity “a priori”.
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Unity of Invention
Lack of Unity “posteriori”
Claim 1. A+B
Claim 2. A+C
A is a common concept (be it a single concept or a group of concepts) in
claims 1 and 2.
If A is known from the prior art, there is lack of unity “posteriori”,
since A is not a technical concept that defines a contribution over the prior
art.
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Unity of Invention
Lack of Unity “posteriori”
Example 1.
Claim 1. A compound of formula (I),
R1 H, hydroxy, C1-6 alkyl,
R2, R3 and R4 H, halo, hydroxy, nitro.
(I)
Prior art:
A compound (I) when R1-OH, R2-Hal, R3,R4-OH is known from the prior art.
Therefore claim 1 is lack of unity “posteriori”.
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Unity of Invention
Lack of Unity “posteriori”
Example 2.
Claim 1. A compound of formula (I),
X -H, C1-6 alkyl,
R1 - OH, amino, hydroxyl, C3-9 cycloalkyl.
S
(I)
Prior art:
A - 6-membered ring selected from aryl, heteroaryl,
R1 – OH, C1-6 alkyl, C4-6 alkenyl.
Compounds (I) and (II) have a same activity.
(II)
The prior art describes the compound (II) when pyridyl exists instead
thiopyran group, R1-OH, X – H. Therefore claim 1 is not inventive and lack
of unity “posteriori”.
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Unity of Invention
Unity of invention. Particular Situations
1. Markush formula.
2. Different categories of claims.
3. Process for preparation, intermediate and final product.
4. Compositions.
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Unity of Invention
1. Markush formula
The alternatives of Markush formula are regarded as being of a similar nature
where the following criteria are fulfilled:
1. All alternatives have a common significant structural element.
Common significant structural element occupies a large portion of their
structures.
R1,R2 are C1-6 alkyl,C2-6 alkenyl, C2-6
alkynyl,
R3,R4 are C3-6 cycloalkyl, aryl.
2. All alternatives have a common property or activity.
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Unity of Invention
1. Markush formula (cont.)
Claim 1. A compound of the formula A – B– C – D
A is selected from C1-6 alkyl, C1-6 alkenyl, optionally substituted C6-12
aryl, C5-C7 heterocycle having 1-3 heteroatoms selected from O and N;
B is selected from optionally substituted C6-12 aryl, C5-C7 heterocycle
having 1-3 heteroatoms selected from O and N;
C is selected from C5-C8 saturated or unsaturated heterocycle having 1-4
heteroatoms selected from O, S or N;
D is selected from C1-6 alkyl, C1-6 alkenyl, C3-6 cycloalkyl.
From the above formula no significant structural element can be readily
arose and thus no special technical concept can be determined.
Lack of unity exists between all of the various combinations.
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Unity of Invention
2. Different categories of claims.
An application includes different categories of claims (compound, process, use, kit).
Unity of invention exists if claims are drawn to the following combinations of
categories:
1. A compound and a process for the manufacture of said compound;
2. A compound, a process for the manufacture of said compound, and a use of
the said compound;
3. A compound, a pharmaceutical composition comprising the said compound, a
process for the manufacture of said compound, a use of the said compound, a
use of the said pharmaceutical composition, a kit.
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Unity of Invention
2. Different categories of claims (cont.).
Example
Claim 1. Compound A (Markush formula).
Claim 2. Process for the preparation Compound A.
Claim 3. The use of compound A for the preparation a pharmaceutical
composition.
Claim 4. A kit comprising a compound A.
1. Compound A is new. A is the special technical concept to all the
claims.
Unity exists between claims 1,2,3 and 4.
2. One of alternatives of Compound A is known in the art, therefore A is not
be a common special technical concept to all claims. Unity of invention
does not exists.
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Unity of Invention
3. Process for preparation, intermediate and final product.
Unity of invention exists when the following two conditions are fulfilled:
1. The intermediate and final products have same essential structural
element.
The term “intermediate” is intended to mean intermediate or starting products.
Such products have the ability to be used to produce final products through a
physical or chemical change in which the intermediate loses its identity.
2. The intermediate and final products are technically interrelated, this
meaning that the final product is manufactured directly from the intermediate.
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Unity of Invention
4. Compositions.
The composition of a number of individual elements is claimed in a single claim, unity
of invention exists, even if these individual elements seem unrelated when considered
individually.
Example 1.
Claim 1: A composition comprising Compound A, B and C.
Unity of Invention exists, even if the compounds seem unrelated one to another,
because the composition is novel and/or inventive over the prior art.
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Unity of Invention
4. Compositions.(cont.)
Example 2.
Claim 1. A composition comprising Compound A.
Claim 2. A composition comprising Compound B.
Claim 3. A composition comprising Compound A and Compound B.
A and B are known.
Compound A is a special technical concept and Compound B is another special
technical concept.
Unity exists between claims 1 and 3 or between claims 2 and 3 but not between
claims 1 and 2.
Therefore claims are separated to two inventions:
Invention I: Claim 1, Claim 3, relate to a composition comprising Compound A.
Invention II: Claim 2, Claim 3, relate to a composition comprising Compound B.
Moreover, claims 1,2,3 do not meet requirements of Commissioner Circular M.N. 78.
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Unity of Invention
4. Compositions.(cont.)
Commissioner Circular M.N. 78, 2010.02.02
Number of independent claims limited to
a) One or two independent claims for a product
b) One or two independent claims for a method to manufacture the product
c) One or two independent claims for a device producing the product
d) One or two independent claims for a use of the product (Swiss-type)
Requirement : the independent claims relate to single invention
(Section 8, Israeli Patent Law ).
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II. The main points in examination of methods and
combinations for controlling pests.
Compound A is new
Method for
controlling
pests
Agricultural composition comprising
a) compound A and
b) compounds B,C or D (are known)
Compound A is known
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Example 1. (IL 192953)
Claim 1. The use of 3-pyridyl derivatives of formula I and/or 3-pyridyl derivatives of formula II
Rule 20(a)(3)
or a composition comprising
(a) a compound of formula (I) and/or a compound of formula (II) and
(b) an agrochemicaly acceptable carrier
for combating pests.
Rule 20(a)(3)
C. Circular M.N. 30
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Example 1. (IL 192953)
Commissioner Circular M.N. 30, 2004.08.17
1. Acceptable claims
Swiss-type: e.g. “use of X in the manufacture/preparation of Y”.
2. Not acceptable claims:
Claims referring to a product: e.g. “use of X as a paint”
Claims referring to medical treatment: e.g. “use of X in the
treatment of disease Y”.
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Example 1. (IL 192953)
Rule 20(a)(3) Israel Patents Regulations :
Section (a)(3): claim defines an invention at essential and
clear form
1. Two subject matters (use of compound and use of composition) are claimed in
the same claim that is opposite to Rule 20(a)(3).
2. The definition “pest” is wide that is opposite to Rule 20(a)(3).
A pest is a plant or animal detrimental to humans or human concerns, alternative
meanings include organisms that cause nuisance and epidemic disease.
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Example 1. (IL 192953)
Section 7(1)
Rule 20(a)(3)
Claim 2. A method for controlling pests comprising contacting the pests or their food supply,
habitat, breeding ground or their locus with a pesticidally effective amount of composition or
compound of formula I or II as defined in claims 1 or 2.
Rule 20(a)(3)
Section 7 Israel Patent Law
(1) no patent shall be granted for a method of therapeutic treatment
on the human body.
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Example 1. (IL 192953)
Rule 20(a)(3)
Claim 3.
Rule 20(a)(3)
Claim 4.
Rule 20(a)(3)
Claims 2,3,4 are related to three different methods,
therefore these claims do not meet requirements of Commissioner Circular M.N. 78.
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Example 1. (IL 192953)
Commissioner’s Circular M.N. 78, 2010.02.02
Number of independent claims limited to
a) One or two independent claims for a product;
b) One or two independent claims for a method to manufacture the product;
c) One or two independent claims for a device producing the product;
d) One or two independent claims for a use of the product (Swiss-type).
Requirement : the independent claims relate to single invention
(Section 8, Israel Patent Law).
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Example 1. (IL 192953)
Rule 20(a)(3)
Claim 5.
Synergistic effect is an effect arising between two or more agents or substances that
produces an effect greater than the sum of their individual effects.
The synergistic effect is not obvious and depends on chemical structure of the compound in
the combination.
The specification does not consist the examples to synergistic mixture, the subject matter claimed
in claim 5 is not supported by the specification as required by Section13(a).
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Example 1. (IL 192953)
Section 12 Israel Patents Law
(a) the specification shall include a title by which the invention can
be identified, its description with drawings that may be necessary,
and also a description of the manner in which the invention can be
performed, enabling a skilled person to perform it.
Section 13 Israel Patents Law
(a) The specifications shall end with a claim or claims that
define the invention, on condition that each said claim
reasonably arise out of the subject described in the
specification.
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Example 2. (IL 198637)
Rule 20(a)(3)
WO 2004080181 discloses
pesticidal synergistic composition
comprising specific insecticide
and additional active compound such as
propamocarb –HCl.
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Example 2. (IL 198637)
Pesticidal composition comprising propamocarb –HCl and additional insecticide is known
from the prior art. Therefore claim 1 is lack of unity. Each separate invention comprises a
composition of propamocarb –HCl and additional insecticide which is chosen from the list
of insecticides in claim 2 according to their activity, which is described in the
specification.(Section 8 Israel Patent law).
The definition of compound B is broad and contains all insecticides compounds except of
flubendiamide. The specification does not involve the examples for possible compositions.
It does not meet requirements of Section 13(a) Israel Patent Law.
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Example 2. (IL 198637)
Section 13(a)
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Example 2. (IL 198637)
Efficacy examples
Dependent claim 2 relates to a list of compound B :
1. the specification has not examples for all of claimed compounds,
2. flubendiamide is claimed, that is excluded by proviso from claim 1.
Claim 2 does not meet requirements of Section 13(a) Israel Patents law.
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Example 2. (IL 198637)
Synergistic activity of the claimed composition.
Specification describes that claimed composition of propamocarb –HCl with
additional insecticide is synergistic in comparison to the single compound.
There are three examples only to specific compositions demonstrate the
synergistic effect, although claims contains a big number of possibilities for
compound B.
Therefore claims are not supported by the specification and do not meet
requirements of Section 13(a) Israel Patent Law.
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Example 2. (IL 198637)
Claim 7. A composition according to claim 1 further comprising C) a further fungicide
compound.
The specification contains the examples for the synergistic composition of A+B
and there are no examples that relate to the composition A+B+C.
Claim 7 does not meet requirements of section 12(a), Israel Patent Law.
Claim 7 does not meet requirements of Section 13(a), Israel Patent Law.
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Conclusions :
The main points in the examination of the pesticide applications
1.
2.
3.
4.
5.
6.
Method of treatment.
Unity of invention.
Use claims.
Definition of terms.
Clarity of claims.
Supporting claim by the description.
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Thank you for
your attention!
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