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If the search division raises the objection of lack of unity of invention a further search fee must be paid in accordance with R. 64(1) EPC (R. 46(1) EPC 1973; unchanged in substance) or Art. 17(3)(a) PCT for each invention involved. If the fee is paid in due time the applicants may select the single invention or group of inventions they wish to retain in the main application.
The consequences of non-payment of the further search fee for the procedure for the grant of a European patent have been the subject of conflicting interpretations on the part of the boards. While it was stated in T 178/84 (OJ 1989, 157) that in the case of non-payment of the further search fee under R. 46(1) EPC 1973 the subject-matter not searched was regarded as abandoned and accordingly could not be pursued in the parent application, in T 87/88 (OJ 1993, 430) it was expressly stated that non-payment could not result in abandonment. The board stated that non-payment of the further search fee in no way prejudiced the future legal fate of the unsearched parts and that R. 46(1) EPC 1973 merely provided that in the case of non-payment of further search fees the search division was to draw up a European search report only for those parts of the application that related to the invention for which the search fees had been paid.
The President of the EPO therefore referred the following point of law to the Enlarged Board of Appeal:
"Can an applicant who fails to pay further search fees for a non-unitary application when requested to do so by the search division under R. 46(1) EPC 1973 pursue that application for the subject-matter in respect of which no search fees have been paid or must he file a divisional application for it?"
In G 2/92 (OJ 1993, 591) the Enlarged Board of Appeal decided that the application could not be pursued for subject-matter in respect of which the applicants had not paid the further search fees. Instead the applicants had to file a divisional application for that subject-matter if they wished to continue to protect it. In the view of the Enlarged Board, it was clear from the procedural system of the EPC 1973 that the invention which was to be examined for patentability had to be an invention in respect of which a search fee had been paid prior to the drawing up of the European search report. Part IV of the EPC 1973 envisaged that an application progressed after filing from the search division to the examining division. One object of R. 46 EPC 1973 was to implement this procedure by ensuring that an appropriately extensive search was completed in respect of each individual application before it was examined by the examining division. To this end, in response to an invitation from the search division to pay one or more further search fees in respect of one or more further inventions to which the application related, applicants had to pay such further search fees if they wished to ensure that one of the further inventions could become the subject of the claims of that application. That was the proper interpretation of R. 46(1) EPC 1973 in context. This confirmed the practice according to T 178/84.
In T 319/96 the initial application lacked unity, but no further search fee was paid. The applicant took the view that, because of the international-type search (Art. 15(5)a) PCT) carried out by the EPO for the subject-matter of the original claims 4 to 10, it had not forfeited its right to choose and could therefore continue pursuing this subject-matter. It had paid a search fee for each of the two inventions, and two search reports had been prepared by the Office. Since the appellant insisted on pursuing the second invention further, the application was refused under Art. 97(1) EPC 1973 in conjunction with Art. 82 and R. 46 EPC 1973.
The board stated that, under R. 46(1) EPC 1973, a search fee was to be paid for each further invention if the European search report was to cover that invention. It was true that an international-type search report had been drawn up under Art. 15(5)(a) PCT for the subject-matter of the second invention in the context of another procedure, i.e. the national procedure for the purpose of establishing priority; however, this could not simply replace the European search report. R. 46 EPC 1973 did not provide that a search report from another procedure could be substituted for the European search report. Rather, the Rules relating to Fees (RFees) provided that a search report on the same subject-matter, if prepared by the Office outside the context of the European grant procedure acting in a different capacity on the basis of other treaties, should be taken into consideration in so far as the European search fee was partly or wholly refunded (Art. 10(2) RFees). The restitution was therefore made by “rolling back”, not by waiving the European search fee. For this reason, R. 46 EPC 1973 did indeed apply here, and the appellant would have been obliged to pay the further search fee in order to retain the option of pursuing the second invention in the application at issue.
In T 631/97 (OJ 2001, 13) the board held that R. 46(1) EPC 1973 on its proper interpretation does not prohibit a review by the examining division of the search division's opinion on lack of unity of invention where further search fees are not paid. A narrow interpretation of R. 46(1) EPC 1973 whereby the finding of lack of unity of invention by the search division is considered as final where the additional search fees are not paid would deprive the applicant of an opportunity to dispute the finding of the search division during the examination proceedings and would also unjustifiably restrict the power of the examining division on the question of unity of invention to the subject-matter for which search fees were paid. Thus the board did not share the view held in T 1109/96. The board found that the above interpretation of R. 46(1) EPC 1973 was in agreement with that of the Enlarged Board of Appeal in Opinion G 2/92. It also found that the Guidelines were fully consistent with G 2/92 and R. 46 EPC 1973.
The board noted that the practice of search and examination of international applications under the PCT where the EPO was elected or designated office was also consistent with the above view: R. 112 EPC 1973 which entered into force on 1.3.2000 (OJ 1999, 660–667) required the EPO to examine the requirement of unity of invention of an international application entering the EPO as a Euro‑PCT application also where the ISA considered that the application did not comply with the requirement of unity of invention (R. 13.1 and R. 13.2 PCT), and the applicant did not pay additional search fees according to Art. 17(3)(a) PCT. R. 112 EPC 1973 has been renumbered as R. 164 EPC and contains substantial amendments.