According to well-established case law, R. 137(5) EPC does not apply when the applicant has not paid the search fee in respect of a non-unitary invention relating to the originally filed claims (see T 708/00, OJ 2004, 160, T 1285/11).
The first requirement for applicability of R. 137(5) EPC is that the amended claims must relate to unsearched subjectmatter.
In T 442/11, the board noted that, under R. 137(4) EPC, as in force before 1 April 2010, amended patent claims could not relate to unsearched subject-matter which did not combine with the originally claimed invention or group of inventions to form a single general inventive concept. It observed that R. 137(4) EPC (having the same wording as R. 86(4) EPC 1973) had entered into force on 1 June 1995 and been incorporated in the Implementing Regulations to prevent applicants from switching, during the examination proceedings, the protection sought to unsearched parts of the application which had not yet been claimed when the search was performed (see "travaux préparatoires" on R. 86(4) EPC 1973, OJ 1995, 409; and T 509/11, T 2334/11).
In T 2334/11, the examining division had taken the view that the amendment to claim 1 did not meet the requirements of R. 137(5) EPC and so refused the amended set of claims according to the main request. The board observed that the first requirement for applicability of R. 137(5) EPC (formerly R. 137(4) EPC and, before that, R. 86(4) EPC 1973) was that the amended claims related to unsearched subjectmatter. It stressed that it did not necessarily follow from the mere fact that a feature was not included in the searched set of claims that it had not been searched (see T 708/00, OJ 2004, 160, T 377/01 and T 789/07). Thus, Art. 92(1) EPC, as worded in the EPC 1973 in force at the time of the search at issue, required that the search report be drawn up "on the basis of the claims, with due regard to the description", while the Guidelines for Examination stated that "in principle, the search should cover the entire subject-matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended" (Guidelines, BIII, 3.5). In the board's view, the subjectmatter of the amended claim had to be deemed searched for the purposes of R. 137(5) EPC, even if the search had not actually covered the added feature (see T 789/07).
In T 708/00 (OJ 2004, 160) the application was refused by the examining division, principally on the grounds that the new claims were not allowable under R. 86(4) EPC 1973. The board noted that R. 86(4) EPC 1973 must be interpreted so as to fairly balance the objective of this rule, namely the EPO’s interest in collecting, in return for services rendered, search and examination fees, and the fundamental right conferred by the EPC on the applicant to make amendments at least once to the description, claims and drawings that prove necessary during the grant procedure. The board pointed out that the intention and purpose of R. 86(4) EPC 1973 and the interference with the applicant's fundamental right to amend the application at least once called for a strict interpretation of R. 86(4) EPC 1973 (T 141/04). It held that R. 86(4) EPC 1973 did not apply when the applicant had not paid the search fee in respect of a non-unitary invention relating to the originally filed claims in spite of being invited to do so under R. 46(1) EPC 1973. In that case, the application could not be examined further, and a divisional application would have to be filed if protection were sought (see G 2/92, OJ 1993, 591). The boards in T 319/96 and T 631/97 (OJ 2001, 13) made a clear distinction between applying the provisions of R. 86(4) EPC 1973 and a situation where search fees were not paid in spite of an invitation to do so under R. 46(1) EPC 1973.
In T 613/99 the board stated that R. 86(4) EPC 1973 referred to a particular situation, i.e. where subject-matter was described but not claimed in the original application and was therefore not searched; where that subject-matter failed to meet the requirement for unity of invention with the matter claimed in the application; and where, following the search report, the applicants had filed fresh claims relating only to this unsearched matter. In this situation, the patentability of these fresh claims could not be examined in the context of the original application, since this would have amounted to a derogation from the principle endorsed in G 2/92 (OJ 1993, 591), according to which the invention to be examined had to be an invention for which a search fee had been paid. In the case at issue, the situation was entirely different. The claimed subject-matter in the application under consideration had been claimed in the original application and had therefore been searched, even if it had not been possible to carry out a meaningful search. Moreover, the invention forming the subject of claims 1 and 2 of the application at issue was substantially the same as that which formed the subject of claims 1 and 2 of the original application. In such a situation, if the examining division rejected a finding of the search division regarding matter excluded from the search, a so-called additional European search could be carried out at the request of the examining division.