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Case Law of the Boards of Appeal

Subject­matter not having technical character 

In T 1242/04 (OJ 2007, 421) 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. The board noted that 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 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.