M.Sc. Karina Volkov, Dr. Nina Korbakov

April 2016

Contents:

Unity of Invention.I. Part

8. IL Patent Law, Section I Ia) Lack of Unity : “a priori”;

Ib) Lack of Unity : “posteriori”. of invention. Particular Situations.II. Unity

IIa) Markush formula; IIb) Different categories of claim;

IIc) Process for preparation, intermediate and final product;

IId) Compositions. . pestscontrolling and combinations for Methods Part II.

The main points in examination.

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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.

of Israel Patent Law 8 Section

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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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Claim 1. A+B

Claim 2. A+C

Claim 3. B+C

There is no common subject matter to all claims.

A is common in claims 1 and 2,

therefore Unity exists only for these claims.

Lack of Unity “a priori”

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Example. Claim 1. A compound of formula (I)

Lack of Unity “a priori”

Claim 2. A compound of formula (II)

(I)

(II)

Compounds (I) and (II) have no common significant structural element. There is lack of unity “a priori”.

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Claim 1. A+B Claim 2. A+C

A is a common concept (being 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.

Lack of Unity “posteriori”

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”Lack of Unity “posteriori

Example 1.

Claim 1. A compound of formula (I), R1 =H, hydroxyl, substituted heteroaryl group, R2, R3 and R4 =H, halo, hydroxyl, nitro.

(I) Prior art:

A compound (I) (when R1-OH, R2-Hal, R3,R4-OH) is known from the prior art. Therefore claim 1 lacks unity “posteriori”.

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”Lack of Unity “posteriori

Example 2.

Claim 1. A compound of formula (I), X -H, C1-6 alkyl, R1 - amino, hydroxyl, C3-9 cycloalkyl.

(I) Prior art: Heteroaryl- pyridyl group. R1 – OH, C1-6 alkyl, C4-6 alkenyl.

The prior art describes the compound (II) when pyridyl exists instead thiopyran ring, R1-OH, X – H.

Therefore claim 1 is not inventive and lacks unity “posteriori”.

(II) Compounds (I) and (II) have the same activity.

S

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1. Markush formula.

2. Different categories of claims.

3. Process for preparation, intermediate and final product.

4. Compositions.

Unity of invention. Particular Situations

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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 - C1-6 alkyl,C2-6 alkenyl,C2-6 alkynyl, R3,R4 - C3-6 cycloalkyl, aryl.

1. Markush formula

. activitya common property or All alternatives have .2

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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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2. Different categories of claims.

Application includes different categories of claims (compound,process,use,kit).

Unity of invention exists if the 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 use of the said

compound;

3. A compound, a pharmaceutical composition comprising the said compound,

a process for the manufacture of said compound, use of said compound,

use of said pharmaceutical composition, a kit.

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.. Different categories of claims (cont.)2

Example Claim 1. Compound A (Markush formula). Claim 2. Process for the preparation of Compound A. Claim 3. The use of compound A for the preparation of a pharmaceutical composition. Claim 4. A kit comprising compound A.

o Compound A is new.

A is the special technical concept to all the claims. Unity exists between claims 1,2,3 and 4.

oOne of the alternatives of Compound A is known in the art.

claims. all for special technical concept a common cannot be A

Unity of invention does not exist.

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Process for preparation, intermediate and final product.. 3

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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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 Compounds A, B and C.

the , because to one another, even if the compounds seem unrelated existsof Invention Unity .composition is novel and/or inventive over the prior art

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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. Compounds 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: Claims 1 and 3 relate to a composition comprising Compound A. Invention II: Claims 2 and 3 relate to a composition comprising Compound B.

4. Compositions.(cont.)

Examination of

Pesticide Composition in view of

Patent LawIsraeli , 8Section

Korbakov Nina

April 2016

227722

Example 1

Colby’s equation: Expected = A + B – (A x B/100) A = observed efficacy of active ingredient A at the same concentration as used in the mixture; B = observed efficacy of active ingredient B at the same concentration as used in the mixture.

Synergism and Synergistic Composition

B B +

Example 2

Example 3

) discloses 2004080181(WO Prior art

pesticidal synergistic composition

comprising specific insecticide

and additional active compound such as

propamocarb –HCl.

Example 4

Thank you!