BOARDS OF APPEAL
Decisions of the Technical Boards of Appeal
Decision of Technical Board of Appeal 3.3.1 dated 15 December 1994 - W 3/94 - 3.3.1
Composition of the board:
J. M. Jonk
Applicant: Hoechst AG
Article: 154(3) EPC
Article: 17(3)(a) PCT
Keyword: "Obligation under Rule 40.1 PCT to specify reasons not fulfilled in view of PCT guidelines"
I. An invitation to pay additional search fees fulfils the requirements of Rule 40.1 PCT only if substantiated in such a way as to indicate why unity is lacking, on the basis of the criteria laid down in the PCT Search Guidelines.
II. This is particularly the case where the unity of alternatives "of a similar nature" in a Markush claim is contested on the basis that they do not share a significant structural element (Reasons point 10).
Summary of facts and submissions
I. On 16 April 1993 the applicant filed international patent application PCT/EP-93/00916. Its claim 1 is directed to compounds having formula I
in the form of (+) or (-) enantiometers or a mixture thereof or of their salts, in which
I Ar1 and Ar2 may or may not be the same and
(a) signify (C6-C12) aryl or heteroaryl with up to 10 C atoms or
(b) are defined as under I(a) above and bear up to 5 identical or different substituents defined under (1) to (45), of which for the purposes of the present decision only the following are significant:
(10) (C6-C12) aryl, optionally substituted up to three times with identical or different residues from the series (C1-C6) alkyl, (C1-C6) alkoxy, (C1-C6) halogenalkyl and (C1-C6) halogenalkoxy, and
(19) (C6-C12) aryloxy, optionally substituted as under I(b)(10) above;
II. R has the meanings (not reproduced here) defined under (a) to (f);
subject to the proviso that various features are claimed only in the combinations (not reproduced here) defined under III(a) to (g).
The compounds in question have an acaricidal, insecticidal and nematicidal effect and can be used as pest control agents.
II. By communication of 5 August 1993 (date of despatch) the EPO as International Searching Authority under the PCT ("ISA") requested the applicant under Article 17(3)(a) in conjunction with Rule 40.1 PCT to pay 16 additional search fees totalling DEM 38 400 within 30 days of said date of despatch.
III. The ISA substantiated this request on the basis that documents
(1) EP-A-4 754 and
disclosed similar compounds with insecticide properties, and that numerous compounds explicitly referred to in both documents were novelty-destroying in respect of the class of compound claimed.
The ISA argued that in both the above prior art and the present application the technical problem was to produce compounds with an insecticidal effect. Therefore the compounds claimed in the present application neither solved a new problem nor contained any structural features suggestive of a shared special technical feature within the meaning of Rule 13.1 and 2 PCT.
In these circumstances the ISA defined 17 different inventions or groups of inventions, the following being of significance for the purposes of the present decision:
Compounds in which Ar2 signifies unsubstituted aryl;
Compounds in which Ar2 signifies aryl defined as under I(b)(19);
Compounds in which Ar2 signifies aryl defined as under I(b)(10) and not covered by Invention 5; and
Compounds in which Ar2 signifies aryl defined as under I(b)(5) and not comprised by inventions 5 and 6.
IV. On 3 September 1993 and under protest the applicants paid DEM 7 200, for three additional search fees in respect of Inventions 5, 6 and 7 defined above (Rule 40.2(c) PCT).
In support of their protest they argued that the subdivision into 17 inventions was arbitrary given only slight differences in the Ar2 residue substitution pattern. The invention related exclusively to structurally similar compounds linked by a common inventive concept and with largely the same biological properties.
They also filed a substitute page 141, which they wanted taken together with the documents originally filed as the basis for further proceedings. This substitute page extended the group of compounds constituting exceptions under Section III(c) of claim 1, to avoid overlap with the prior art.
The applicants requested an additional search on Inventions 5, 6 and 7 listed in the ISA's invitation, including multiple substitution of Ar2 by various substituents (see claim 1, definition I(b), line 2) for which there was a series of examples.
V. On 16 December 1993 the ISA informed the applicants that after reconsideration it considered the invitation to pay the additional search fees under Rule 40.2(c), (d) and (e) fully justified, and requested them to pay a protest fee of DEM 2 000 within one month.
In this communication the ISA said it could understand that the subdivision into 17 inventions based on the Ar2 residue substitution pattern might seem arbitrary to the applicants. However, it had hardly been able to identify in the application groups of compounds with a common structural element not already disclosed in the prior art as a structural element of insecticidal agents. The subdivision made therefore
seemed the best possible. Nor had the applicants succeeded in showing that there was a special technical feature ensuring the unity of the inventions claimed.
VI. The applicant paid the protest fee on 13 January 1994.
Reasons for the decision
1. The protest is admissible.
2. Under Article 154(3) EPC the boards of appeal rule on protests against additional fees charged by the ISA under Article 17(3)(a) PCT. Under Rule 40.2(c) PCT they can examine the protest and, to the extent that they find it justified, order total or partial reimbursement of the additional fee.
In the present case, the applicants have paid three additional search fees under protest - for Inventions 5, 6 and 7 defined in the ISA's invitation to pay. The board can therefore rule only on whether the non-unity objections raised in respect of the subject-matter defined in Inventions 1, 5, 6 and 7, and the resulting invitation to pay the three additional fees, were justified.
3. The board has no power to examine the unity of the present invention on the basis of the new claim 1 as per substitute page 141 submitted by the applicants on 3 September 1993. Its powers derive - as indicated above - from Article 154(3) EPC in conjunction with Rule 40.2(c) PCT, which provide for it to examine the protest. This of course it can do only on the basis of the documents available when the ISA issued its invitation to pay the additional search fees; there is no provision for amendments during proceedings before the ISA. The substitute page can at best be regarded as indicating that the ISA should no longer search certain subject-matter.
4. The board sees from the ISA's invitation to pay that its non-unity objection was based on the subject-matter disclosed in documents (1) and (2) above, and was thus made a posteriori.
5. Under decision G 1/89 (OJ EPO 1991, 155), the ISA can issue such an invitation because of non-unity a posteriori, but should then exercise restraint in the assessment of novelty and inventive step and in borderline cases not raise non-unity objections (op. cit., Reasons point 8.2).
6. Rule 40.1 PCT stipulates that the invitation under Article 17(3)(a) PCT to pay additional fees must say why the international application is considered to lack unity. This means it must include a substantiation the applicant can follow, indicating not only the reasons why the single invention as per the independent claim (solution of the technical problem defined against the closest prior art) is not new or inventive, but also why, once the invention's single general inventive concept is dropped, unity no longer exists between the newly defined alternative subject-matter, if this is not clear from that definition.
7. In the case at issue, the ISA, in the light of the disclosure in documents (1) and (2), divided the subject-matter of claim 1 as originally filed (and defined using a Markush formula) into 17 separate inventions, including Inventions 1, 5, 6 and 7 relevant here and essentially involving the following subject-matter:
1. A group of compounds having the formula defined in claim 1, in which Ar2 represents an unsubstituted (C6-C12) aryl group (see claim 1, under I(a));
5. A group of compounds in which Ar2 signifies a (C6-C12) aryl residue containing up to 5 identical or different (C6-C12) aryloxy substituents optionally substituted up to three times by identical or different residues from the series (C1-C6) alkyl, (C1-C6) alkoxy, (C1-C6) halogenalkyl and (C1-C6) halogenalkoxy, and optionally up to 4 identical or different substituents of the others defined under I(b)(1) to (45) (see claim 1 under I(b)(19), in conjunction with I(a) and I(b), lines 1 and 2);
6. A group of compounds in which Ar2 signifies an (C6-C12) aryl residue containing up to 5 identical or different (C6-C12) aryl substituents optionally substituted up to three times by identical or different residues from the series (C1-C6) alkyl, (C1-C6) alkoxy, (C1-C6) halogenalkyl and (C1-C6) halogenalkoxy, and optionally up to 4 identical or different substituents of the others defined under I(b)(1) to (45) (see claim 1 under I(b)(10), in conjunction with I(a) and I(b), lines 1 and 2), and not covered by Invention 5, ie the aryloxy substituents as per Invention 5 are excluded as other optional substituents in the aryl residue; and
7. A group of compounds in which Ar2 signifies an (C6-C12) aryl residue containing up to 5 identical or different halogen atoms and optionally up to 4 identical or different substituents of the others defined under I(b)(1) to (45) (see claim 1 under I(b)(5) in conjunction with I(a) and I(b), lines 1 and 2) and not covered by Inventions 5 and 6, ie the aryloxy substituents as per Invention 5 and the aryl substituents as per Invention 6 are excluded as other optional substituents in the aryl residue.
8. In the invitation to pay, the sole reason given for the ISA's non-unity objection was that the claimed compounds did not share a new structural element compared with D1 and D2, or have a new effect over that prior art.
9. The issue is whether the ISA thereby fulfilled its obligation to substantiate its findings.
10. To establish this, the board must consider not only the PCT and its Regulations but also, under Article 2 of the agreement between the EPO and WIPO dated 7 October 1987 (OJ EPO 1987, 515; see also G 1/89, Reasons point 6), the search guidelines applicable, ie the PCT guidelines as amended on 18 November 1992 and whose Chapter VII concerns unity of invention. Paragraph 1 of said chapter requires that when assessing unity in accordance with the principles set out in Rules 13.2 to 13.4 PCT, Section 206 and Annex B of the Administrative Instructions as in force from 1 July 1992 must be observed. Annex B, Part 1(f) specifies certain criteria for assessing the unity of Markush claims, and in particular that for alternatives contained in such claims the requirement of a technical interrelationship and the same or corresponding special technical features as defined in Rule 13.2 PCT are to be considered to be met when the alternatives are of a similar nature.
Alternatives are to be regarded as "of a similar nature" where the following criteria are fulfilled [Annex B, Part 1(f)(i)]:
(A) all alternatives have a common property or activity, and
(B)(1) a common structure is present, ie a significant structural element is shared by all of the alternatives, or
(B)(2) in cases where the common structure cannot be the unifying criterion, all alternatives belong to a recognised class of chemical compounds in the art to which the invention pertains.
A "recognised class of chemical compounds" under (B)(2) above means that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention. In other words, each member could be substituted for the other, with the expectation that the same intended result would be achieved (Annex B, Part 1(f)(iii)).
11. The instructions do say (Annex B, Part 1(f)(v)) that if at least one Markush alternative is not novel over the prior art, the question of unity of invention must be reconsidered, although reconsideration does not necessarily imply that an objection of lack of unity must be raised. Thus in the case at issue the invitation to pay can
be regarded as specifying reasons within the meaning of Rule 40.1 PCT only if it indicates why in this instance the criteria set out in Annex B, Part 1(f)(i) (B)(2) of the Administrative Instructions are not fulfilled.
12. In the present case, as acknowledged following reconsideration of the justification of the invitation to pay under Rule 40.2(e) PCT, Inventions 1, 5, 6 and 7 defined in the invitation concern groups of compounds which all belong to a known class of compounds with insecticidal effect, namely the aryl-alkyl-ketonoxim-O-ethers. The ISA's findings here would tend to suggest that this is in fact a group of compounds to be regarded as having unity within the meaning of Annex B, Part 1(f)(i) (A) and (B)(2) in conjunction with (f)(iii)) of the Administrative Instructions. Thus there is nothing which so clearly shows lack of unity as to dispense with the need for more precise substantiation (see W 7/86, OJ EPO 1987, 67). More detailed reasons should therefore have been given for the non-unity objection, in line with the relevant PCT Administrative Instructions. In their absence, the invitation to pay does not meet the requirements of Rule 40.1 PCT, and therefore does not provide a basis for retaining the additional search fees paid under protest.
For these reasons it is decided that:
Reimbursement of the additional search fees and the protest fee paid is ordered.