15 Sep 2016

T 1473/11 - Effect of partial non-search ISR

Key points

  • In this examination case, the ISR was restricted to the embodiments of some of the figures, because of lack of clarity of the claims (under Article 17(2)(a)(ii) PCT).
  • The Board rejects the Main Request as not admissible under Rule 137(5) EPC for being directed to a non-searched emodiment of one of the other figures.
  • As a comment, the present decision of Board 3.4.02 illustrates a possible difference between the first and second sentence of Rule 137(5) EPC. Recently, in T 0779/11, Board 3.5.07 had noted that  " Rule 137(5), second sentence, EPC [] states that amended claims "may [not] relate to subject-matter not searched in accordance with Rule 62a or Rule 63". The EPC contains no provision providing for a similar legal effect of a declaration under Article 17(2)(a) PCT. [] Rather than having legal consequences, the issuing of the declaration under Article 17(2)(a) PCT had the practical effect that no results of a prior-art search were available when the examination proceedings commenced." Hence, in case of a complete refusal to search, this would have had no legal effect, according to T 0779/11. The partial search under Article 17(2)(a)(ii) is brought under the first sentence of Rule 137(5) EPC in the present decision, thereby having a legal effect. 
  • However, I doubt whether Rule 137(5), first sentence, EPC, is not restricted to partial search reports for lack of unity of invention of the claims as filed. The provision was inserted as Rule 86(4) EPC 1973, in 1994, and complemented decision G 2/92 (OJ EPO 1995, 420) in order to ensure that search fees are paid. Arguably, the first sentence is restricted to subject matter not searched for lack of unity of invention. This is also consistent with the need for a second sentence to cover Rule 62a and 63 EPC. Edit 08.10.2017: the previous sentence is not entirely correct, because for partial search reports under Rule 64 EPC, G 2/92 applies and not Rule 137(5), see Guidelines H-II 7.2. Still, the holding of G 2/92 is limited to non-unity and does not extend to lack of clarity. In conclusion, I don't agree with T 1473/11.
T 1473/11 - link

Reasons for the Decision
1. The appeal is admissible.
2. Main Request
2.1 In its communication of 27 April 2016 the board objected that it doubted that the sets of claims according to the Main and First Auxiliary Requests filed with the letter of 13 April 2016 complied with Rule 137(5) EPC.
2.2 This provision reads:
"Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. Nor may they relate to subject-matter not searched in accordance with Rule 62a or Rule 63."
2.3 The "single general inventive concept" requirement is defined in Article 82 EPC and elaborated on in Rule 44(1) EPC (unity of invention) which reads:
"Where a group of inventions is claimed in a European patent application, the requirement of unity of invention under Article 82 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those features which define a contribution which each of the claimed inventions considered as a whole makes over the prior art."
2.4 Concerning the subject-matter on which the search had been based for the present patent application, an international preliminary report on patentability had been issued. In its Box III "Non-establishment of opinion with regard to novelty, inventive step and industrial applicability" of this report, the box "no international search report has been established for the whole application or for said claims Nos. 1-162" had been ticked.
In the accompanying international search report, the following objection was made under Box II, with reference to sheet PCT/ISA/210:
"Continuation of Box II.2
Claims Nos.:
The present independent claims 1 and 82 are unclear and, additionally, relate to an extremely large number of possible methods/devices. Support and disclosure in the sense of Article 6 and 5 PCT is to be found however for only a small proportion of the apparatus/methods claimed; see Figures 3-5 and corresponding pages 7-10 of the application. The non-compliance with the substantive provisions is to such an extent, that the search was performed taking into consideration the non-compliance in determining the extent of the search of claims 1 and 82 (PCT Guidelines 9.19, 9.23 and 9.25).
The search of claims 1 and 82 was restricted to those claimed apparatus/methods how they are understood and which appear to be supported. The extent of the search was consequently limited to the clearly defined examples in the description; see above-mentioned figures" (emphasis by the board).
2.5 It therefore appears that the search had been restricted to the apparatuses and/or methods disclosed in the context of Figures 3 to 5 and addressed on pages 7 to 10 of the published patent application. This is confirmed by paragraph 2 of section "Re Item V." of the written opinion of the international searching authority, which reads:
"2. The subject-matter of Claims 1 and 82, as far as the claims are understood, is anticipated from D1, or D2 or D3; see citations in the international search report. Also the embodiments corresponding to Figures 3 to 5 are known from these documents ...."
2.6 The citations in the international search report refer, inter alia, to document D3 (US2004/179202) citing paragraphs [0019] to [0034] and Figure 1. Indeed, Figure 1 of this document discloses an apparatus for analyzing optical properties of an object as defined in claims 1 and 82 of the original patent application in the context of Figure 5, i.e. comprising a Linnik interferometer, see in particular Figure 1 and paragraph [0021] of document D3. Therefore original claims 1 and 82 examined in the context of the embodiments of Figures 3 to 5 did not include any "special technical features" within the meaning of Rule 44(1) EPC, since their features were anticipated by prior-art document D3.
2.7 Amended claim 1 of the Main Request filed with the letter dated 13 April 2016 addresses the embodiment disclosed in the context of Figure 1 and page 5, final paragraph to page 6, second paragraph. Unlike the apparatus for analyzing optical properties defined in original independent claim 82 and searched in the context of Figures 3 to 5, present claim 1 is related to an apparatus for analyzing optical properties defined according to the embodiment of Figure 1 which includes a particular modulator as defined in the characterising portion of claim 1.
The embodiment of Figure 1 and the corresponding part of the description were not part of the original search. Furthermore it appears that the particular modulator defined in the characterising portion of claim 1 does not have a "same or corresponding feature" as regards the embodiments that were the subject of the international search (i.e. the embodiments of Figures 3 to 5), since these embodiments do not include such a modulator. Furthermore, as pointed out by the board in point 1.4 of its communication of 27 April 2016, the feature "modulator" was not defined in any of the original claims. Therefore, irrespective of whether the particular modulator defined in claim 1 of the Main Request defines a "special technical feature" over the prior art (which cannot be established, since such a claim was not part of the international search), the amended claim does not combine with the originally claimed invention "to form a single inventive concept" as prescribed by Rule 137(5) EPC, because the new feature does not have a corresponding feature in either the original claims or in the embodiments of Figures 3 to 5.
3. First Auxiliary Request
In its communication of 27 April 2016 the board observed that claim 1 of the First Auxiliary Request defined an apparatus comprising the features of claim 1 of the Main Request (addressing the embodiment in Figure 1) and comprising additional features of the embodiment in Figure 3 (page 8, second paragraph), namely a lens having high chromatic aberration. However, the original patent application did not provide a basis for combining the features of the embodiments in Figure 1 (disclosing an apparatus with an SLM effecting different optical path differences to portions of a wavefront) and Figure 3 (employing a high chromatic aberration lens and an array of small holes).
Therefore claim 1 of this request, and similarly claim 10, appeared to infringe Article 123(2) EPC.
Furthermore, in addition to the claimed subject-matter apparently not being disclosed in the application as originally filed, it also appeared doubtful that this embodiment had been part of the international search, because the embodiment in Figure 1 related to unsearched subject-matter within the meaning of Rule 137(5) EPC (see also point 2 supra).
3.2 With its communication of 27 April 2016 the board informed the appellant that it doubted that the appellants' two requests were admissible in view of Rule 137(5) EPC. The appellant did not provide any counter-arguments against the position of the board, nor did it file any further requests. The board sees also no reason to depart from the preliminary opinion expressed in its communication.
4. In view of the above, the board considers that neither the Main Request nor the First Auxiliary Request is admissible in view of Rule 137(5) EPC.
5. In the absence of any allowable request, the appeal is to be dismissed.
For these reasons it is decided that:
The appeal is dismissed.

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