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.