European Round-Table on Patent Practice (EUROTAB)
|European Case Law Identifier:||ECLI:EP:BA:1990:W003690.19901204|
|Date of decision:||04 December 1990|
|Case number:||W 0036/90|
|IPC class:||C07H 15/252|
|Language of proceedings:||EN|
|Download and more information:||
|Title of application:||New 3'-(4-morpholinyl)- and 3'-(2-methoxy-4'- morpholinyl) antracycline derivatives|
|Relevant legal provisions:||
|Keywords:||Non-unity a posteriori (no)|
Summary of Facts and Submissions
I. Following the filing of this International patent application the EPO, acting as ISA, issued an invitation to pay six additional search fees because it considered that the application did not comply with the requirements of unity of invention because the general problem underlying the invention was not novel or did not involve an inventive step having regard to the five patent specifications revealed by the search.
The Applicant paid two additional search fees under protest. The Applicant contended that in carrying out an "a posteriori" examination at the search stage the ISA has to make assumptions which may be unjustified and in this respect, relied on the decision W 03/88 (OJ EPO, 1990, 126).
Furthermore, the Applicant maintained that there was no detailed argument setting out why the ISA considered that the application related to seven inventions rather then to five, six, eight or any other number.
Reasons for the Decision
1. The protest is admissible.
1.1 As one reason for his protest the Applicant contended that the reasoning behind the decision W 03/88 was correct. In this decision it was held that the ISA does not have any obligation or power under the PCT to carry out an "a posteriori" examination, i.e. an examination as to novelty and/or inventive step, in relation to the requirement of unity of invention (cf. second paragraph of Point 8 of the Reasons). However in its decision G 1/89 of 2 May 1990, the Enlarged Board of Appeal held that "a posteriori" objections of lack of unity were allowable.
Although this decision of the Enlarged Board of Appeal was issued before the Applicant filed his protest on 13 July 1990, the Board consider that the Applicant is still entitled to rely on the decision W 03/89 since the decision G 1/89 or its Headnote (cf. OJ EPO, 11/1990) had not been published in the Official Journal at this date.
2. In the above mentioned decision of the Enlarged Board of Appeal, it was stated that a posteriori lack of unity objections were allowable provided the consideration by an ISA of the requirement of unity of invention is always made with a view to giving the applicant fair treatment and that the charging of additional fees should only be made in clear cases.
3. Although the ISA based its findings of lack of unity upon a posteriori considerations, it did not give any reasons why such considerations are appropriate in the present case for the purpose of the international search.
3.1 Moreover, in the Guidelines for International Search to be carried out under the PCT as agreed upon by the Interim Committee for Technical Cooperation at its seventh session in Geneva in October 1977 (PCT/INT/5), it is stated that in cases of lack of unity, especially in an "a posteriori" situation, the search examiner may decide to complete the international search for the additional invention(s) together with that for the invention first mentioned, in particular in those cases where the inventions are conceptually very close and none of them requires search in separate classification units. If the search examiner exercises his discretion in this manner then all results should be included in the international search report and no objection of lack of unity of invention should be raised (cf. Chapter VII, point 12).
In the Board's judgement, the present case is clearly one in which the search examiner should have exercised his discretion in agreement with the above Guidelines since both these prerequisites are met in the present case (C 07 H 15/252).
4. On the basis that an unspecified general problem lacked novelty or did not involve an inventive step, the ISA choose not to exercise its discretion and divided the subject-matter of Claim 1 into seven alleged inventions without giving any reasons as to how it arrived at these particular groups of subject-matter. Such an unreasoned and arbitrary allegation cannot be met with a reasoned statement in reply from the Applicant.
In these circumstances, the Board considers that the request for the payment of six additional search fees is not justified.
For these reasons, it is decided that:
Reimbursement of the two additional search fees is ordered.