4.4.7 Need for additional search

In T 14/02, intended requests as suggested by the respondent in the oral proceedings would not just have involved a minor change in the wording of claim 1 but rather major limitations of the claim which in all likelihood would have required a new search by the appellant and could have caused a remittal to the first instance (see also T 51/90, T 270/90, OJ 1993, 725; T 25/91). In T 48/91, the board refused the amended claims as inadmissible because they contained additional features the impact of which was either unclear or impossible to assess without further investigations such as carrying out proper comparison tests (see also T 234/92, in which a feature from the description was introduced to claim 1, so that an additional search might have been required, and T 1105/98, in which an additional search was needed).

If an additional search is needed to assess the lack of patentability asserted as the ground for opposition, so that either the oral proceedings must be adjourned or the case must be remitted to the first-instance department for further prosecution, it is unreasonable to expect the other parties to accept this (T 494/04).

In ex parte case T 979/07, the board said that admitting a set of claims filed only in oral proceedings and necessitating an additional search because it shifted the claimed invention to other technical matter would de facto give applicants in appeal proceedings carte blanche to get oral proceedings postponed or the whole examination procedure reopened. That would be at odds with the requisite procedural economy (see also T 407/05, T 1123/05 and T 764/07).

In T 2127/09, the search division considered that the claimed subject-matter was merely an obvious implementation of game rules on known hardware and did not carry out a search. At the oral proceedings before the board the appellant (applicant) submitted an amended set of claims as sole request in response to the board's objections. The board stated that it was necessary to carry out an additional search in accordance with R. 63 EPC. The board emphasised that remittal should be seen as an exceptional procedural possibility, and that it had also to be examined whether the applicant could have been expected to have made earlier the amendments which were made during the appeal before the board (see Art. 12(4) RPBA), and thereby could have requested the examining division to perform the necessary search. The board decided to admit the amendments to the claims.

In T 870/07, the board admitted the main request filed during the oral proceedings as it was in no doubt that the additionally claimed subject­matter had also been searched. The situation was not new in the sense that the board was faced with an incomplete search preventing it from examining the claimed subject-matter.

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