Zusammenfassung von EPC2000 R 064(2) für die Entscheidung T2703/18 vom 06.12.2023

In T 2703/18 the board considered the scope of the review under R. 64 EPC and the restraint to be exercised in the context of this rule. It noted that according to a number of board of appeal decisions the scope of the examining division's review under R 64(2) EPC (previously R. 46(1) EPC 1973) is limited to the consideration of certain facts and/or arguments. The board agreed with T 188/00 to the extent that the examining division may only find that the communication pursuant to R. 64(1) EPC was justified within the meaning of R. 64(2) EPC on the basis of the facts regarding the prior art presented by the search division with that communication, in particular the documents cited in the partial search report including sheet B. The board, however, was not fully convinced by the reasons provided in T 188/00, which referred inter alia to the so-called "protest procedure" according to R. 40.2(c) PCT. The present board pointed out that there were some notable differences between R. 64 EPC and R. 40 PCT (and, a fortiori, R. 68 PCT). In particular, R. 40.1(i) and 40.2(c) PCT expressly required both the invitation to pay additional fees and the refund request to be reasoned, which R. 64 EPC did not. Moreover, while the relevant PCT Guidelines were binding guidance for the EPO when acting as an ISA and for the boards of appeal back when they were deciding on protests under the PCT (see G 1/89, headnote and point 6 of the Reasons), neither the PCT International Search and Preliminary Examination Guidelines nor the Guidelines for Examination in the EPO were binding on the boards of appeal when reviewing decisions of examining divisions (Art. 23(3) EPC). Hence, the conclusions drawn in the case law for the review of invitations to pay additional search fees under R. 40.2(c) PCT (or additional preliminary examination fees under R. 68.3(c) PCT) did not immediately carry over to R. 64(2) EPC. The board concluded that the examining division may well rely on further facts in a finding that the communication under R. 64(1) EPC was not justified, for instance in the circumstances of the case in T 755/14 or, say, if further evidence shows that the only document cited in the partial search report and relied on in an a posteriori non- unity finding does actually not belong to the prior art. Such further facts need also not have been submitted by the applicant. The board disagreed with the view expressed in T 2526/17 and T 1414/18 that the scope of the review should also be limited to the arguments presented by the search division, at least if understood as a limitation to only those arguments. According to the board, in the context of R. 64(2) EPC, the examining division may, in order to find the communication under R. 64(1) EPC to have been justified, complete a reasoning outlined by the search division with the communication but may not replace it by an entirely different reasoning, even if based on the same prior art. Concerning the restraint to be exercised in the context of R. 64 EPC, the board stated that findings of lack of unity a posteriori must be raised with caution especially when they rest on an objection of inventive step. Moreover, the search division should refrain from raising formalistic objections based on a literal interpretation of the claims, because the assessment of unity of invention by the search division in the context of R. 64 EPC only serves the purpose of determining whether a partial search report is to be issued and the search according to Art. 92 EPC is to be based on the basis of the claims "with due regard to the description and any drawings". Findings on novelty or inventive step of the search division in its communication under R. 64(1) EPC should thus be robust, especially against foreseeable amendments and against clarity issues that the claims may have. In the case at issue the board held that the reasoning of the examining division, like that of the search division, ignored the dependencies of claims 10 and 11 (apart from their dependency on claim 1) and it appeared that the examining division had only considered the additional features defined in each of the claims. The board therefore concluded that the communication pursuant to R. 64(1) EPC was not justified and the further search fee paid for claims 10 and 11 was to be refunded.