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Case Law of the Boards of Appeal

 
 
4.1.2 Additional search necessary: limited discretion of the examining division

In T 1515/07 the board stated that in normal circumstances an additional search had to be carried out if a search under R. 63 EPC is missing. 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. 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. The examining division considered that it was not "necessary" to carry out a search because a decision could be reached anyway. 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.

In T 1242/04 it was held that only when a search is not at all possible can it be denied under R. 45 EPC 1973. Whether or not the search division believes that the result of a search will be of use for the substantive examination is irrelevant. If nevertheless the situation occurs that no search has been performed although it could (and should) have been, an examining division is not obliged to perform an additional search for purely formal reasons if it considers a refusal of the application to be justified on the basis of prior art which is either so well known that it clearly does not require written proof or is accepted by the applicant as known. In all other cases an additional search should be performed.

In T 690/06 regarding the procedure before the examining division the board was of the opinion that the examining division should have performed an additional search since the database partitioning and access control features were neither non-technical nor notorious. Following the principles set out in decision T 1242/04 (OJ 2007, 421), the board considered that, as long as no search has 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. The term "notorious" had to be interpreted narrowly.

In T 1411/08 the board understood "notorious" as implying that technical detail was not significant. The board stated that where a search division has decided that no search was to be performed, it is not always necessary for the examining division to carry out an "additional search" before raising an inventive-step objection. According to the established case law of the boards of appeal it is possible to raise an objection of lack of inventive step without documented prior art ... That should be allowable where the objection is based on 'notorious knowledge' or indisputably forms part of the common general knowledge(T 1242/04, OJ 2007, 421). Such cases, however, are exceptional, and a search is otherwise essential. In the case at issue, the examining division could and should have ensured that a search was performed before refusing the application for lack of inventive step. The board considered that the failure to carry out an "additional search" constituted a substantial procedural violation and that the reimbursement of the appeal fee must be ordered.