W 0011/89 (Fibre fleece) 09-10-1989
Lack of unity - underlining used to emphasise words in a list
Lack of substantiation
Invitation unfounded on substantive grounds too
I. The applicants filed international application No. PCT/EP ... with the European Patent Office on 13 January 1989.
II. On 8 May 1989 the European Patent Office, acting as the International Searching Authority (ISA), issued an invitation to the applicants pursuant to Article 17(3)(a) and Rule 40.1 PCT, pointing out that it considered the application lacked unity.
By way of substantiation, the invitation indicated both a first invention according to Claims 1 to 8 and 10 relating to "use of a fibre fleece as a dirt trap" and a second invention according to Claim 9 relating to "a fibre fleece covered on one side with foil for use as a measuring device for liquid detergents".
Apart from emphasising the words "dirt trap" and "measuring device" by underlining them in a list of the inventions found in the application, the ISA gave no further details to substantiate the invitation.
III. In a telex despatched on 29 May 1989, the applicants paid the required additional search fee under protest, stating in support of their protest merely that Claim 9's subject-matter also fell within the scope of the problem of improving the washing process in a simple way. In the alternative, they maintained that the additional fee was excessive given the close relationship between the technical fields involved.
On 31 May 1989 the applicants sent a letter confirming the telex's contents.
1. Under Article 154(3) EPC the European Patent Office's Boards of Appeal are responsible for deciding on protests made by applicants against additional fees charged to them.
2. This protest complies with Rule 40.2(c) PCT and is therefore admissible.
3. According to established case law, a fundamental requirement for an invitation to pay additional fees pursuant to Article 17(3)(a) and Rule 40.1 PCT to be legally effective is that it should set out the grounds for issuing it (see W 4/85 and W 7/86 - OJ EPO 1987, 63 and 67; W 9/86 - OJ EPO 1987, 459; W 7/85 - OJ EPO 1988, 211).
The minimum requirements for an invitation to be adequately substantiated were laid down in the key decision W 4/85 of 22 April 1986, according to which the basic consideration behind the finding that the application lacks unity must be set out in a logical sequence so that both applicant and appeal body can examine whether the finding is justified. A mere list of the application's subject-matters will only be sufficient in straightforward cases and even then it must be immediately clear from the list that the application does not relate to a single general inventive concept. In the later decision W 7/86 of 6 June 1986 it is expressly stated that this can only apply in exceptional cases, and these will be particularly rare in the field of chemistry.
4. The present case is not such an exception for the following reasons:
4.1 Emphasising the words "dirt trap" and "measuring device" in the list of inventions considered separate merely gives the impression of lack of unity if the claims are taken in isolation, i.e. not in conjuncton with the problem as set out in the description. However, whether or not the present case constitutes a single general inventive concept cannot be properly judged without taking that problem into account. The invitation fails to do so. It merely asserts lack of unity without analysing the invention in terms of problem and solution. As a result it is completely unclear whether the two groups of inventions mentioned in the invitation really differ from each other so much that no technical connection or interaction is discernible. The ISA's invitation is not legally effective for the simple reason that it contains no clear reasoning behind the finding that a technical connection or interaction does not exist in this particular case. It would not be necessary to address the problem only if it were immediately clear from the technical details given in the invitation that these could not reasonably be seen as parts of an overall problem.
4.2 In this case, however, the description states that the present invention is based on the problem of improving the washing process in a simple way. That problem is solved by adding a fibre fleece which is placed in suds or the like to act as a dirt trap. The fibre fleece can be made more effective by covering one side with impermeable foil. This kind of liquid- storing fibre fleece thereby serves a dual purpose: on the one hand it can be used to measure out detergent and on the other it acts - either at the same time or after a delay - as a dirt trap (cf. page 1, lines 12 to 18; page 3, lines 9 to 11 and 31 to 34; page 6, lines 17 to 22).
Consequently, the liquid-storing fibre fleece according to Claim 9 fulfils the function of a dirt trap too. But even without the specific reference to this in the description it could be assumed that a fibre fleece described exclusively as a measuring device for liquid detergent would also solve the problem of improving the washing process in a simple way. The claimed invention's technical cohesion is thereby assured.
Moreover, by not contesting product claims 6 and 7 which are dependent on Claim 1 the ISA was presumably acknowledging that the liquid-storing fibre fleece is merely a special embodiment of the basic form set out in Claim 1 and, like the latter, fulfils the function of a dirt trap. Since, however, the only additional information needed for using a fibre fleece to measure out detergent is the fact that it is suitable as a device for storing liquid - without it being necessary for this to solve a different problem to that of improving the washing process - the two uses necessarily form a single inventive concept.
It is clear from the search report that no document has been cited against the fibre fleece according to Claim 6 and, consequently, the claim must be regarded as allowable, at least at this stage. It is therefore difficult to see why two or more uses cannot be claimed in conjunction with a valid product claim in the same application.
In these circumstances the Board must assume that in this particular case the requirement for a single general inventive concept within the meaning of Rule 13.1 PCT has been fulfilled.
5. For the above reasons the invitation of 8 May 1989 is not legally effective and the additional search fee must therefore be refunded. There is no need to consider the applicants' alternative submission that the additional fee was excessive.
For these reasons it is decided that:
Refund of the additional search fee is ordered.