T 0708/00 (Transmission frame/ALCATEL) of 05.12.2003

I. Amended claims may only be refused on the basis of Rule 86(4) EPC if the subject-matter of the claims filed originally and that of the amended claims is such that, had all claims originally been filed together, a further search fee would have been payable - on top of the search fee payable in respect of the claims actually filed at the outset - in respect of the amended claims, relating to a different invention within the meaning of Rule 46(1) EPC (see Reasons, points 3 to 8).

II. The fact that a document is prejudicial to the novelty of a particular claimed subject-matter is not sufficient reason to establish lack of unity "a posteriori" between claimed subject-matters. For there to be lack of unity, these claims would have to define a "group of inventions", ie different inventive alternatives or more concrete inventive embodiments initially forming part of the same known general concept. In any case Article 82 and Rule 30 EPC only apply to "inventions" within the meaning of these provisions, ie inventions which each make an inventive contribution to the state of the art as cited in the search report (see Reasons, point 16).

III. A subsequent amendment to limit the subject-matter of the main claim by additional features disclosed in the application as filed does not generally affect the notion of unity of invention under either Rule 86(4) or Rule 46(1) EPC. It is normal for an applicant to make such an amendment in respect of an objection to the patentability of the subject-matter in unlimited form. This allows the applicant to overcome the objection under Article 123(1) EPC (see Reasons, point 17).