Case Law of the Boards of Appeal

In T 613/99, the EPO as International Searching Authority considered that the invention forming the subject-matter of claims 1 and 2 of the international application related to acts excluded from patentability. On the basis of R. 39(1)(iii) PCT, it refrained from searching these two claims but established an international search report on the remaining claims. The examining division having stated in a later communication that claims 1 and 2, in view of the amendments made to them, no longer concerned subject-matter excluded from patentability, the applicants responded by filing a fresh set of claims comprising these two claims only. Subsequently, the examining division refused the European patent application, explaining that R. 86(4) EPC 1973 was applicable in this case since the amended claims related to matter which had not been the subject of an international search.

In T 443/97 the appellant (opponent) had argued that the amended claim contravened R. 86(4) EPC 1973. The board stated that the amended claim did not relate to unsearched subject-matter. Moreover, it pointed out that R. 86(4) EPC 1973 related to issues concerning lack of unity of invention. It was also clear from the EPO Notice dated 1.6.1995 (OJ 1995, 409) that R. 86(4) EPC 1973 concerned examination proceedings, and particularly those cases in which no further search fees requested by the search division for non‑unitary subject‑matter had been paid by the applicant. The purpose of R. 86(4) EPC 1973 was to exclude any amendment which circumvented the principle according to which a search fee must always be paid for an invention presented for examination. The board noted that unity of invention was a requirement of an administrative nature and that the administrative purposes of this requirement were fulfilled when the examination procedure had been concluded, i.e. when the patent had been granted (see G 1/91, OJ 1992, 253). Therefore, R. 86(4) EPC 1973 was not relevant for the opposition case at issue.

The board noted that a subsequent amendment to limit the subject-matter of the main claim by additional features disclosed in the application as filed did not generally affect the notion of unity of invention under either R. 86(4) or R. 46(1) EPC 1973.

The board found that in its decision the examining division did not take into account the fact that R. 86(4) EPC 1973 mentioned another condition which also had to be fulfilled for amended claims to be rejected, namely that the unsearched subject-matter did not combine with the originally claimed invention to form a single general inventive concept (lack of unity). There was no discussion in the appealed decision as to why the subject-matter of new claim 1 was not in unity with original claim 1. The board came to the conclusion that the appealed decision was not reasoned within the meaning of R. 68(2) EPC 1973.

In T 274/03 the board noted that it was clear that post-search "switching" of subject-matter clearly implied a significant change in the nature of the subject-matter being claimed which was not normally comparable to the addition of features taken from the description to further define an element that was already a feature of the original main claim. The board was of the opinion that an amendment amounting to the restriction of an original main claim by including complementary features from the original description into the claim represented an admissible reaction of an applicant vis-à-vis an objection against the patentability of the unamended claim and did not constitute an abuse of the system of the nature which R. 86(4) EPC 1973 was introduced to prevent (T 377/01 and T 708/00). This type of amendment should not therefore in general be judged as contravening the requirements of the rule, even though an additional search could be required. In this context it was to be observed that the implicit finding of lack of unity between the originally claimed and later claimed subject-matter, which was a prerequisite for an objection under R. 86(4) EPC 1973, had to, with amendments of the type under consideration here, be a posteriori. The Guidelines for Examination in the EPO made it clear however that this form of objection to lack of unity should be the exception, with benefit of the doubt being given to the applicant (see also Guidelines C-III, 7.7 - April 2010 version).

The board noted that R. 45 EPC 1973 applied to cases which did not comply with the provisions of the Convention to such an extent that it was not "possible" to carry out a "meaningful search" into the state of the art on the basis of all or some of the claims. Thus a R. 45 EPC 1973 declaration was allowed only where a search was not possible. In other cases the search division would draw up a partial search report, "so far as is practicable". In the board's view, R. 45 EPC 1973 related only to the practicability of a search and not to the potential relevance of its results in subsequent substantive examination. That was clear from the actual wording of the rule, which referred to the impossibility of carrying out a meaningful search in the event of serious violations of the provisions of the Convention, for example a fundamental lack of clarity or the absence of any technical character whatsoever. If these criteria were not met, searching could not be refused by reference to R. 45 EPC 1973, regardless of whether the search in the search division's view would not produce any result of significance to subsequent proceedings. In the final analysis, the search is the basis for substantive examination (and now also for the extended European search report under R. 44a EPC 1973, and not vice versa. Moreover, it was not evident that claims directed only to technical features that the search division deemed "trivial" could prevent a meaningful search into the state of the art, which in fact ought to be particularly simple in such a case. The board held that where the application's subject-matter had non-technical aspects, a declaration under R. 45 EPC 1973 might be issued only in exceptional cases in which the claimed subject matter, i.e. the entire set of claims including parallel and dependent claims, clearly had no technical character. In the board's view, however, it was not always necessary in such circumstances to carry out an additional search in the documented prior art. According to the established case law of the boards of appeal it was possible to raise an objection of lack of inventive step without documented prior art (see e.g. T 939/92, OJ 1996, 309). That should be allowable where the objection was based on "notorious knowledge" or indisputably forms part of the common general knowledge. In such cases it would be inappropriate to carry out an additional search for documented prior art on purely formal grounds (see also T 690/06).

The board held that in such normal circumstances an additional search had to be carried out if a search under R. 63 EPC had not been carried out. It was true that the case law allowed discretion in this respect, but this discretion was limited to the special cases of notoriously known features or those explicitly accepted by the applicant as known. In all other cases, an additional search had to be performed (see T 690/06, point 2 of the reasons). In particular, as long as no search had been performed an examining division should normally not refuse an application for lack of inventive step if the invention as claimed contained at least one technical feature which was not notorious (see T 690/06). According to the examining division's own judgment, the present case did not fall under the above exceptions. The examining division instead considered that it was not "necessary" to carry out a search because a decision could be reached anyway. However, the general acceptance of this argument would lead to the conclusion that substantive examination served as a basis for the search and not vice versa, a finding that decision T 1242/04 explicitly warned against. Under these circumstances the examining division was held to have committed a substantial procedural violation within the meaning of R. 103(1)(a) EPC by not performing an additional search that was manifestly necessary. It was therefore equitable to reimburse the appeal fee. The board also held that an express request for a search was not provided for (see Art. 92(1) EPC), and expedience was no justification for leaving out an obligatory procedural step.