3.2.4 Re-evaluation of the unity requirement in examination

The procedures described in this section relate to substantive examination of applications filed directly at the EPO (Euro-direct applications) and for Euro-PCT applications for which either a supplementary search report was prepared under Rule 164(1) or a search under Rule 164(2) was carried out.

The examining division is required to review the finding underlying the invitation to pay additional fees under Rule 64(1) or Rule 164(1) or Rule 164(2) for three possible reasons.

(a)For applications for which a (supplementary) European search report or search results under Rule 164(2) were prepared and the applicant paid one or more additional search fees in response to an invitation under Rule 64(1) or Rule 164(1) or Rule 164(2), the examining division is required to review the validity of the finding of lack of unity and, on request, to refund any such fees for which the finding of the search division (or, in the case of Rule 164(2), the examining division) was invalid (Rule 64(2) or Rule 164(5) – see C‑III, 3.4).

(b)In cases in which the (supplementary) European search report or the search results under Rule 164(2) were restricted because the applicant, in response to an invitation under Rule 64(1) or Rule 164(1) or Rule 164(2), did not pay all the additional fees and has argued that the restriction was unjustified, the examining division should review whether the finding which was the basis for that restriction was valid and, if it concludes that the finding was unjustified, arrange for an additional search to be carried out.

(c)If in response to the invitation to pay additional fees the applicant either paid no such fees, or paid some but not all of them so that not all of the claims were searched, and unsearched claims are maintained in the substantive examination phase, then the examining division should review the finding on which the invitation was based and only require the applicant to excise the unsearched subject-matter if it concludes that the finding was justified.

When carrying out this review, the correct application of the principles set out in decision G 2/92 (OJ EPO 1993, 591) is essential. If the objection of lack of unity raised at the search stage or under Rule 164(2) was not justified on the basis of the claims as originally filed, then the applicant should not be required to file divisional applications for the unsearched subject-matter (i.e. the subject-matter in respect of which no further search fees have been paid), and thus incur the financial consequences in circumstances where the previous conclusions on unity were not justified.

Moreover, it is essential to bear in mind that the review is restricted to a reconsideration of the validity of that original finding under the circumstances existing at the time when it was made by taking into account only the prior art which was available when the finding was made.