W 0004/85 (Heat-exchanger) 22-04-1986
I.The applicant filed an international application for an invention containing 45 claims.
II. The branch of the European Patent Office at The Hague sent the applicant's representative a communication informing him that the International Searching Authority considered that the international application did not comply with the requirement of unity of invention. In support of its finding it listed ten inventions together with the relevant claims. The communication also pointed out that the International Searching Authority would draw up an international search report for those parts of the international application relating to specific claims of the invention and for the remaining parts only if additional fees were paid. The fee payable for searching each additional invention was DM 2 095 and total additional fees owing amounted to DM 18 855. The applicant was invited to pay the amount within 30 days of the date of despatch given in the communication.
III. The applicant's representative thereupon paid five further search fees amounting to DM 10 475, and in a telegram confirmed in writing explained that the fees were intended to cover five further groups of inventions, but that the further claims were also covered, since they were consistent with the previous ones, as the applicant explicitly showed. In case the Searching Authority did not accept his comments and hence were to refuse his protest, he requested in the alternative that five other sets of claims be examined.
IV. In a telephone call to the branch of the European Patent Office at The Hague the applicant's representative explained that the five additional fees were intended to cover the sets of claims specified in his alternative request and made it clear that his letter was to be considered as a protest within the meaning of Rule 40.2(c) PCT. A communication confirming these statements was sent to the applicant's representative who was informed further that the dossier had been passed on to the Technical Board of Appeal for a decision. The applicant offered no statement to the Board in the proceedings to hear the protest.
1. The protest is admissible under Rule 40.2(c) PCT, since the applicant paid the additional fees under protest and enclosed with his protest a reasoned statement to the effect that the international application complied with the requirement of unity of invention.
2. The protest is justified since the applicant was not sent a legally effective invitation pursuant to Article 17(3)(a) PCT to pay additional fees. The Searching Authority did indeed send the applicant a pro forma invitation pursuant to Article 17(3)(a) and Rule 40.1 PCT; however the invitation did not contain adequate reasons for the finding by the International Searching Authority that the international application did not comply with the requirement of unity of invention. All that was indicated in the pro forma invitation, in the space provided for the reasons and an indication of the relevant claims for each invention, were the words: "see sheet 2". Sheet 2 contained a list of the ten inventions together with the relevant sets of claims mentioned in II above, but no other comments to support the finding.
3. Rule 40.1 PCT stipulates that the invitation provided for in Article 17(3)(a) PCT must specify the reasons for which the international application is not considered as complying with the requirement of unity of invention. The Guidelines for International Search under the PCT dated 18 November 1977 likewise point out (in Chapter VII) that the invitation must specify the reasons why the international application is not deemed to relate to a single inventive concept and must indicate the individual inventions. The invitation contains merely an indication of the individual inventions without giving reasons why the International Searching Authority considers what it regards as individual inventions as not forming a single inventive concept. Hence the invitation does not comply with the requirements of Rule 40.1 PCT. The requirement to give reasons in an invitation pursuant to Article 17(3)(a) PCT and Rule 40.1 PCT is, however, so fundamental that an unsubstantiated invitation cannot be regarded as legally effective. The purpose of setting out reasons is to enable the applicant and, in the case of a protest, the appeal body to examine whether the request to pay additional fees owing to lack of unity of the invention is justified. The basic considerations behind the finding that the invention lacks unity must therefore be set out in a logical sequence. At the least the applicant must be able to identify from the reasons given the considerations that motivated the decision. In straightforward cases all that may be necessary to substantiate lack of unity is a list of the application's subject-matters, particularly when the list makes perfectly clear that the application does not relate to a single general inventive concept within the meaning of Rule 13.1 PCT. The present case is not however so straightforward. The invention relates to a device for exchanging heat and material between two or more fluid media. According to the problem to be solved the device is designed in such a way that the spaces through which the various media are conducted can be readily sealed off from one another and in such a way that the media not only are conducted through the device separately from one another but also can react with one another inside it. The invitation does not make clear why the ten inventions listed relating to the particular problem cannot be considered to form a single general inventive concept within the meaning of Rule 13.1 PCT. Neither the applicant nor the Board is therefore, able to establish whether the invitation to pay additional fees was correctly issued. Since, therefore, it was issued in violation of the obligation to specify the reasons laid down in Rule 40.1 in conjunction with Rule 13.1 PCT, considered to be legally effective. This being so, the applicant paid the additional fees without valid reason and can consequently request that they be repaid.
For these reasons, it is decided that:
Reimbursement of the five additional fees paid by the applicant is ordered.