4.1.2 Additional search necessary: limited discretion of the examining division

In T 1515/07 the board stated that in normal circumstances an additional search had to be carried out if a search under R. 63 EPC was missing. The case law allowed discretion in this respect, but this discretion was limited to the special cases of notoriously known features or those explicitly accepted by the applicant as known. In all other cases, an additional search had to be performed. In particular, as long as no search had been performed an examining division should normally not refuse an application for lack of inventive step if the invention as claimed contained at least one technical feature which was not notorious. The examining division considered that it was not "necessary" to carry out a search because a decision could be reached anyway. The examining division was held to have committed a substantial procedural violation within the meaning of R. 103(1)(a) EPC by not performing an additional search that was manifestly necessary. It was therefore equitable to reimburse the appeal fee.

In T 1242/04 (OJ 2007, 421) it was held that only when a search was not at all possible could it be denied under R. 45 EPC 1973. Whether or not the search division believed that the result of a search would be of use for the substantive examination was irrelevant. If nevertheless the situation occurred that no search had been performed although it could (and should) have been, an examining division was not obliged to perform an additional search for purely formal reasons if it considered a refusal of the application to be justified on the basis of prior art which was either so well known that it clearly did not require written proof or was accepted by the applicant as known. In all other cases an additional search should be performed.

In T 690/06 regarding the procedure before the examining division the board was of the opinion that the examining division should have performed an additional search since the database partitioning and access control features were neither non-technical nor notorious. Following the principles set out in T 1242/04, the board considered that, as long as no search has been performed, an examining division should normally not refuse an application for lack of inventive step if the invention as claimed contained at least one technical feature which was not notorious. The term "notorious" had to be interpreted narrowly. See also T 918/14.

In T 1411/08 the board understood "notorious" as implying that technical detail was not significant. The board stated that where a search division had decided that no search was to be performed, it was not always necessary for the examining division to carry out an "additional search" before raising an inventive-step objection. According to the established case law of the boards of appeal it was possible to raise an objection of lack of inventive step without documented prior art. That should be allowable where the objection was based on "notorious knowledge" or indisputably forms part of the common general knowledge (T 1242/04). Such cases, however, were exceptional, and a search was otherwise essential. In the case in hand, the examining division could and should have ensured that a search was performed before refusing the application for lack of inventive step. The board considered that the failure to carry out an "additional search" constituted a substantial procedural violation.

In T 929/18 the board, referring to decision T 1411/08, held that a mobile user device of a peer-to-peer data sharing group was a technical feature of the infrastructure of the system, which went beyond a notorious data processing system. Therefore, the board remitted the case to the examining division for an additional search to be carried out (Guidelines C‑IV, 7.2 – March 2022 version). The board noted that the Guidelines did not define what such an additional search should cover. In the board’s view, in a case like this, where no search had been carried out, the additional search should be just as complete as a normal prior art search under Art. 92 EPC. Furthermore, the results of the search ought to be presented in the public file, either in a separate document or in a communication of the examining division. At a minimum, the field of search and the relevant documents should be indicated. Should the search not reveal any relevant documents, a statement to that effect would allow the applicant, a board of appeal and third parties to conclude that the search had been completed.

In T 1924/07 the board held that the applicant's acknowledgement in the original application that certain prior art was known was, in general, not a sufficient reason for not carrying out an additional search. The only condition under which an additional search can be dispensed with was where all the technical features of a claim correspond to "notorious" prior art.

In T 2299/10 the decision under appeal was, inter alia, based on the objection that the subject-matter of claim 1 lacked an inventive step. The EPO acting as International Searching Authority issued a declaration of non-establishment of the international search report under Art. 17(2)(a) PCT. No supplementary European search report was established either. The examining division examined the application despite the fact that no search had been carried out. However, this was only possible in exceptional cases and, according to the case law of the boards of appeal, an additional search for pertinent prior art may be dispensed with only if the technical features of the claims were considered to be "notorious", i.e. generic and so well known that they could not reasonably be refuted (see T 1411/08). In the board's judgment, the technical features went beyond the mere common general knowledge and could not be considered "notorious". An applicant's acknowledgement in the original application that certain prior art was known is in general not a sufficient reason for not carrying out an additional search since such statements may be – and indeed frequently are – withdrawn or qualified. Moreover, this could only apply in cases where all the technical features in the claim would be acknowledged as known (see T 1924/07). In the case in hand, however, the appellant did not acknowledge the relevant features of claim 1 mentioned as being known. Thus, claim 1 could not be definitively assessed with respect to novelty and inventive step without knowledge of the relevant documented prior art. Thus the request required a search for relevant prior art. Hence the matter had to be remitted for an additional search and further examination.

In T 359/11 the board held that where the relevant search authority had stated, either in a search report or in a declaration that no search report would be established, that it was not necessary to cite any documentary evidence of the prior art on the grounds that all of the technical features of the claimed invention were notorious, it was always incumbent upon the examining division to consider whether an additional search was necessary. The criterion to be applied was that if the invention as claimed contained at least one technical feature which was not notorious, the application should normally not be refused for lack of inventive step without performing an additional search (see T 690/06). In the case in hand, the choice of the examining division to decide on the issue of inventive step without performing an additional search could only be considered justifiable if the claimed subject-matter comprised no technical features which were non-notorious.

In T 2249/13 the appellant doubted the legitimacy of the notice from the EPO dated 1 October 2007 concerning business methods (OJ 2007, 592), which announced a no-search policy for claims pertaining to business methods. It claimed such discrimination was not justified. It considered that the EPO had enriched itself unfairly by receiving the search fee without performing a search. Furthermore, the no-search declaration of the search division could not be deemed to be a European search report under R. 63(2) EPC as the search division had ignored R. 63(1) EPC by failing to invite the appellant to file a statement indicating the subject-matter to be searched. The board pointed out that the board was applying the EPC and associated provisions as they stood. The Rules Relating to Fees did not provide for a refund of the search fee in case of a no-search declaration under R. 63 EPC. R. 63(2) EPC states that such a no-search declaration shall be considered as the European search report. Further, the fact that the search division did not comply with R. 63(1) EPC (failure to communicate with the appellant) did not alter the legal situation. The search division's actions were not open for review by the board (Art. 106(1) EPC) and, for the same reason, neither was the search division's reliance on the notice from the EPO dated 1 October 2007 concerning business methods. Therefore, the board considered that the request for a (partial) refund of the search fee was inadmissible.

In T 1895/13 the board concurred with in T 2249/13; it could only apply the EPC and associated provisions as they were. Art. 9(1) RFees provided for a refund of the search fee only in the case that the European patent application was withdrawn at a time when the EPO had not yet begun to draw up the search report, but not in the case of a no-search declaration under R. 63 EPC. Furthermore, the search division could be assumed to have analysed the set of claims before taking the decision to issue a no-search declaration, and, hence, it could not be argued that the EPO had been unjustly enriched. The board explained that it was also not competent to decide on claims for compensation in respect of a loss or damage allegedly caused by the EPO in the course of patent grant proceedings (see J 14/87, OJ 1988, 295).