a) Features considered non-technical

Where the subject-matter of an application is considered non-technical, the examining division may carry out no search. This can also be the case for individual non-technical features, i.e. no search is carried out against such features and they are not taken into account in the patentability assessment at the examination stage, e.g. under the COMVIK approach.

In several cases in which boards of appeal considered that the subject-matter of an application or a feature that the examining division deemed non-technical was in fact technical, the boards remitted the case to the examining division. The boards did so because they could not further assess the application without an additional search.

Since the primary object of appeal proceedings is to review the decision of the department of first instance (Art. 12(2) RPBA), where the invention had not yet been searched on the basis of the features since found to be technical, and in some cases novelty and inventive step had not been examined either, the boards considered that special reasons presented themselves to remit the matter to the department of first instance for a search and further examination. See e.g. T 547/14, T 1749/14, T 943/16, T 658/18 and T 1984/18.