PCT AG-IP 5.116 May different categories of claims be combined in an international application?

5.116.   May different categories of claims be combined in an international application?  The method for determining unity of invention contained in Rule 13 is construed as permitting, in particular, the inclusion of any one of the following combinations of claims of different categories in the same international application:

(i) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product, and an independent claim for a use of the said product, or

(ii) in addition to an independent claim for a given process, an independent claim for an apparatus or means specifically designed for carrying out the said process, or

(iii) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product and an independent claim for an apparatus or means specifically designed for carrying out the said process,

it being understood that a process is specially adapted for the manufacture of a product if it inherently results in the product and that an apparatus or means is specifically designed for carrying out a process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art.

5.117.   An apparatus or means is considered to be “specifically designed for carrying out” a claimed process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art.  Consequently, it would not be sufficient that the apparatus or means is merely capable of being used in carrying out the claimed process.

Source: http://www.wipo.int/pct/en/appguide/text.jsp?page=ip05.html

Date retrieved: 24 November 2017

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PCT Implementing Rules