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Guidelines for Examination

 
 

7.2 Restriction to an unsearched invention

If not all of the claimed inventions have been searched, in accordance with G 2/92 the applicant must restrict the claims to one of the searched inventions. If however in reply to the search opinion the applicant then restricts the claims to one of the originally claimed inventions which has not been searched, the examiner will write a first communication repeating the lack-of-unity objection raised in the search opinion. Any arguments of the applicant should be duly considered and dealt with in the communication.

If the application is restricted to an unsearched but originally claimed invention, it can be refused under Rule 64 in line with G 2/92 (subject to the applicant's rights under Art. 113(1) and Art. 116(1).

Rule 137(5) cannot be invoked. It 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.

If the application is a Euro-PCT application (see also H‑II, 7.4) the examiner should, depending on the case:

either object under Rule 164(2)(c) to the restriction of the claims to an invention notsearched neither (on grounds of lack of unity) by the EPO as (Supplementary) International Searching Authority nor as part of a search under Rule 164(2)(a),
or object under Rule 164(1) in line with G 2/92 in the context of a supplementary search in the European phase (see B‑II, 4.3.2, B‑VII, 2.3 and E‑VIII, 4.2). When objecting under Rule 164(2) the examiner must confirm the lack-of-unity objection raised in the search opinion.

In both cases, if the applicant declines to limit the claims to a searched invention, the application is refused under Rule 164 in accordance with G 2/92.