T 0820/15 - Rule 137(5) and dependent claims

Key points

• The Examining Division had refused the application under Rule 137(5) EPC. 
• The Board: " To determine the compliance with Rule [137(5) EPC], it has to be first ascertained whether or not the amended claims relate to unsearched subject-matter and only in the event that the subject-matter is considered to be unsearched must it be further checked whether this subject-matter combines with the originally claimed invention to form a single general inventive concept, i.e. whether the respective subject-matters may be considered to be unitary".
  As a comment, in my view the applicant can free choose for which one of the two cumulative requirements of Rule 137(5) he wants to show that it doesn't apply in the case at hand, hence in my view, there is no prescribed order. (see my article in epi Information 2018/2).  
• The Board: "In the present case, claim 1 of the main request differs from claim 1 as originally filed in that it now includes added features G) and H) and further specifies that the audio-visual information is broadcast to multiple receivers.  It is apparent to the board that the entire application relates to TV broadcast systems, i.e. inherently [...] in accordance with feature H) and that using dynamic amounts of training information within the meaning of feature G) had been appropriately reflected in dependent claims 3, 11, 19 and 27 as originally filed. It also appears from the file that those dependent claims were in fact searched according to the respective International Search Report dated 4 November 2009. The board, therefore, concludes that the above added features cannot objectively be considered to be unsearched within the meaning of [Rule 137(5) EPC]."
• As a comment, Rule 137(5) EPC refers to "subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept". As held in T708/00, hn.1, unity of invention with one of the original claims is sufficient; hence, in this case, the Board could also have noted that feature G has unity of invention with e.g. original calm 3 specifying the same feature. As explained in T708/00, hn. 1, the question is, if the claim at issue had been added to the original set of claims, had a further search fee been payable.
• Rule 137(5) is for features taken from the description; lack of unity between the original claims needs to be addressed under G2/92 which is a separate and distinct ground for not admitting claims (see my article and OJ 1995, p.420 which contains the EPO's explanation of the then-new rule). 
• This decision takes a different course than I did in my article; of course, very well the Board can be right or perhaps there is no substantive difference.
• I am always open to any insights about Rule 137(5) EPC, comments are welcome.

EPO T 0820/15 - link

3.1 Allowability of claim amendments (Rule 137(5) EPC)

3.1.1 The examining division found that present claim 1 did not comply with the requirements of Rule 137(5) EPC because its subject-matter as amended related to unsearched subject-matter and did not combine with the originally claimed invention to form a single general inventive concept (see Reasons 1 to 3). This was essentially because the originally filed independent claims did not comprise any feature pointing towards adapting the amount of training information within the meaning of feature G) of claim 1 (see appealed decision, Reasons 3.2.2).

3.1.2 As to the application of Rule 137(5) EPC, the board first points out that, in the present case, Rule 137(4) EPC - as in force from 13 December 2007 until 31 March 2010 - applies, since the respective International Search Report had been completed on 22 October 2009, i.e. before 1 April 2010 (cf. Decision of the Administrative Council of 25 March 2009, OJ EPO 2009, 299, Article 2).

Rule 137(4)(2007) EPC (corresponding to Rule 86(4) EPC 1973 and Rule 137(5) EPC as from 1 April 2010) stipulates that 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". Given the principle that the EPC assumes that a search fee must always be paid for an invention presented for examination, this rule is intended to prevent amendments of the application which circumvent this principle (see T 274/03, Reasons 4).

To determine the compliance with Rule 137(4)(2007) EPC, it has to be first ascertained whether or not the amended claims relate to unsearched subject-matter and only in the event that the subject-matter is considered to be unsearched must it be further checked whether this subject-matter combines with the originally claimed invention to form a single general inventive concept, i.e. whether the respective subject-matters may be considered to be unitary (see e.g. Reasons 2.2 of T 2334/11, cited in the decision under appeal).

3.1.3 In the present case, claim 1 of the main request differs from claim 1 as originally filed in that it now includes added features G) and H) and further specifies that the audio-visual information is broadcast to multiple receivers.

3.1.4 It is apparent to the board that the entire application relates to TV broadcast systems, i.e. inherently broadcasting audio-visual data in accordance with feature H) and that using dynamic amounts of training information within the meaning of feature G) had been appropriately reflected in dependent claims 3, 11, 19 and 27 as originally filed. It also appears from the file that those dependent claims were in fact searched according to the respective International Search Report dated 4 November 2009.

3.1.5 The board therefore concludes that the above added features cannot objectively be considered to be unsearched within the meaning of Rule 137(4)(2007) EPC.

3.1.6 Since the first requirement of Rule 137(4)(2007) EPC, i.e. that the amended claims may not relate to unsearched subject-matter, is found to be fulfilled, the claims of the main request do not infringe Rule 137(4)(2007) EPC.