Abstract on EPC2000 R 164 for the decision T0044/19 of 27.11.2023

In T 44/19 the appeal was filed by the applicant against the interlocutory decision of the examining division to refuse the request for refund of the second search fee. The application had been filed as an international application. The search examiner, acting as International Search Authority, had found that the originally filed claims did not fulfil the requirements of unity of invention but contained two inventions: a first invention in claims 1 to 4 and 6 to 9 and a second invention in claims 5 and 10 to 11. Thus, the applicant had been invited to pay an additional search fee according to Art. 17(3)(a) PCT. No additional search fee was paid in the international phase of the application. After the entry of the application into the regional phase before the EPO, the examining division sent a communication under R. 164(2)(a) EPC. In this communication the examining division agreed with the finding of lack of unity in the International Preliminary Report on Patentability and invited the applicant to pay an additional search fee for the second invention. The applicant paid this additional search fee and a search was carried out for the second invention. The applicant requested the refund of the additional search fee under R. 164(5) EPC. The board agreed with the appellant that the search for the first invention had covered the second invention. The board noted that the hub of claims 2 and 3 had the same function and addressed the same technical problem as the hub of the second invention identified by the objection to lack of unity raised by the search examiner. Consequently, during the search for the first invention and having due regard to the description and drawings, the search examiner had already searched for a hub according to the second invention. In the particular circumstances of the case, the board found that it was irrelevant whether the examining division correctly considered that there was a lack of unity in the claims. According to R. 164(2) EPC, the examining division may only ask for the payment of an additional search fee if it "considers that in the application documents which are to serve as the basis for examination an invention, or a group of inventions within the meaning of Article 82, is claimed which was not searched by the European Patent Office in its capacity as International Searching Authority". However, the search examiner had covered the second invention with the prior art search for claims 2 and 3, so that in fact this invention had been searched. The communication under R. 164(2)(a) EPC, and thus the request for an additional search fee, was therefore not justified and the additional search fee should have been refunded by the examining division under R. 164(5) EPC.