4.1.1 Introduction

Rule 63 EPC (R. 45 EPC 1973) governs the procedure followed by the search division when it is not possible to carry out a meaningful search. For more details see EPC Guidelines B‑VIII, 3 – April 2025 version.

Rule 63 EPC was amended by decision of the Administrative Council CA/D 3/09 of 25 March 2009 (OJ 2009, 299), which entered into force on 1 April 2010. It introduced among other things the invitation to the applicant to file a statement indicating the subject-matter to be searched. In particular, R. 63(1) EPC states that if the EPO considers that the European patent application fails to such an extent to comply with the EPC that it is impossible to carry out a meaningful search regarding the state of the art on the basis of all or some of the subject-matter claimed, it shall invite the applicant to file, within a period of two months, a statement indicating the subject-matter to be searched.

According to R. 63(2) EPC if the statement under paragraph 1 is not filed in due time, or if it is not sufficient to overcome the deficiency noted under paragraph 1, the EPO shall either issue a reasoned declaration stating that the European patent application fails to such an extent to comply with the EPC that it is impossible to carry out a meaningful search regarding the state of the art on the basis of all or some of the subject-matter claimed or, as far as is practicable, draw up a partial search report. The reasoned declaration or the partial search report shall be considered, for the purposes of subsequent proceedings, as the European search report.

In T 1242/04 (OJ 2007, 421) the board held that R. 45 EPC 1973 applied to cases which did not comply with the provisions of the EPC to such an extent that it was not "possible" to carry out a "meaningful search" into the state of the art on the basis of all or some of the claims. Thus a R. 45 EPC 1973 declaration was allowed only where a search was not possible. In other cases the search division had to draw up a partial search report, so far as was practicable. The board explained that R. 45 EPC 1973 related only to the practicability of a search and not to the potential relevance of its results in subsequent substantive examination.

In T 1653/12 the appellant cited T 1242/04 to support its position that a search in the case in hand would not have been impossible. The board noted that T 1242/04 dealt with R. 45 EPC 1973, which had a different wording from current R. 63 EPC. Since T 1242/04 dealt with a case, in which no invitation of the search division under R. 63(1) EPC and no response thereto was present, the reasons of that decision were not directly applicable to the case in hand. However, both decisions stated that fundamental clarity problems might make it impossible to carry out a meaningful search. The discrepancy between the claims and description in the case in hand was such a fundamental clarity problem.

Pursuant to R. 63(3) EPC when a partial search report has been drawn up, the examining division shall invite the applicant to restrict the claims to the subject-matter searched unless it finds that the objection under paragraph 1 was not justified.