In J 24/96 (OJ 2001, 434) the appellant raised the issue of whether, in its decision concerning the refund of further search fees under R. 46(2) EPC 1973 (R. 64(2) EPC), the examining division should have dealt with the alleged incompleteness of the partial search report. The board held that within the framework of R. 46 EPC 1973 it was the task of the examining divisions (and the boards of appeal) to examine whether communications of the search divisions under R. 46(1) EPC 1973 asking for further search fees were justified. R. 46(2) EPC 1973 did not, however, refer to any acts of the search divisions other than communications issued under R. 46(1) EPC 1973. It was therefore not necessary for an examining division to deal in a decision under R. 46(2) EPC 1973 with other objections raised by the applicants in connection with the search, such as the objection that the partial search report was not drawn up in accordance with the Guidelines. The board observed that the examining divisions of course have the possibility of arranging for an additional search to be performed, if they consider a search report delivered by the search division incomplete, but that this had nothing to do with a formal decision issued under R. 46(2) EPC 1973 concerning the refund of further search fees upon request.
With regard to the review by the examining division under R. 46(2) EPC 1973, the board in T 188/00 pointed out that this had to be carried out having regard only to the facts presented by the search division in its communication under R. 46(1) EPC 1973. Since in most cases objections against lack of unity were raised having regard to the prior art (a posteriori unity objections), this meant that the examining division had to base its review solely on the documents cited in the partial search report and on the specification of the different inventions drawn up by the search division, while taking into account any arguments which the applicant might have submitted in support of his request for a refund.
Concerning the analogous protest procedures under the PCT (R. 40.2(c) PCT and R. 40.2(e) PCT and R. 68.3(c) and (e) PCT), the boards of appeal had ruled that these reviews had to be based exclusively on the reasons given in the invitation to pay additional fees, having regard to the facts and arguments submitted by the applicants (W 4/93, OJ 1994, 939). However, in the case in hand the examining division had reasoned that the claims as filed lacked unity a posteriori as a consequence of the finding that claim 1 as filed lacked an inventive step having regard to documents D1 and D4, where the latter document was not cited in the partial search report. Thus the examining division did not review the finding of lack of unity of invention within the meaning of R. 46(2) EPC 1973, but carried out a fresh examination on the basis of a new document D4. The board therefore held that the decision to refuse the refund of a further search fee had to be set aside for formal reasons alone and that the appellant's request for a refund of a further search fee under R. 46(2) EPC 1973 was justified.