T 2029/13 - Unity of invention and old Rule 164

Key points

• In this examination appeal, the claim requests were not admitted by the ED under Rule 137(5) EPC because "their differentiating subject-matter with respect to the main request related to unsearched subject-matter associated with the second invention identified during the supplementary European search".
• When drawing up the supplementary European search report, the EPO found the claims to lack unity of invention and to relate to three different inventions. The SESR was drawn up for the first-mentioned invention. No invitation to pay additional search fees was issued. 
• "In accordance with Rule 164(1) EPC (in the version which entered into force on 1 April 2010; see Decision of the Administrative Council of 27 October 2009 amending the Implementing Regulations to the European Patent Convention, OJ EPO 2009, 582 (CA/D 20/09)), the SESR was drawn up  those parts of the application which related to the invention, or the groups of inventions within the meaning of Article 82 EPC, first mentioned in the claims, i.e. in the present case only claims 1 to 6".  This was a particularly harsh version of Rule 164 EPC (see e.g. T 1981/12 where "the Board can accept that the position in which the appellant finds itself was apparently not taken into account when R 164 was implemented and that it operates in a way which was probably not foreseen and may be thought to be unfair"; see also E.A. Kennington in epi Information 1/2009. Whether or not using Rule 137(5) EPC as the legal basis for the refusal, rather than G 2/92 (see here) was appropriate is an interesting question though obsolete since it concerns a now abolished version of Rule 164 EPC. 
• However, the board is of the view that claims 1 to 13 do not lack unity of invention (Article 82 and Rule 44 EPC). [...] claims 7 to 13 contain all the features of claim 1 and, hence, also the STF identified with respect to that claim 1, i.e. the horizon adjustment control.
• "Consequently, the search division should also have searched claims 7 to 13 of the SESR, including the features in those claims relating to the mounting mechanism, and the examining division should not have raised an objection under Rule 137(5) EPC against the second and third auxiliary requests underlying the decision under appeal on the grounds that claim 1 of those requests comprised unsearched features relating to the mounting mechanism."
• The Board remits the case. 

EPO T 2029/13 - link

Reasons for the Decision

1. The appeal is admissible.

Main and first auxiliary requests

2. The claims of the main and first auxiliary requests are respectively based on the claims of the second and third auxiliary requests underlying the decision under appeal, from which they differ only by the following amendments in claim 1 (additions are underlined, deletions are [deleted: struck-through]):

"... and the lens (26) and the image sensor (18) having an orientation that is adjustable with respect to the housing plane (20);

... to rotate the lens (26) and the image sensor (18) which [deleted: is ]are supported in rotational congruence with..."

3. The examining division did not admit the claims of the second and third auxiliary requests underlying the decision under appeal into the proceedings under Rule 137(5) EPC because "their differentiating subject-matter with respect to the main request related to unsearched subject-matter associated with the second invention identified during the supplementary European search" (see point 1.8 of the "Summary of facts and submissions" and the minutes of the oral proceedings).

4. Since the appellant's present main request and first auxiliary request are based on the second and third auxiliary requests underlying the decision under appeal, the board must review whether the examining division's decision not to admit the second and third auxiliary requests underlying the decision under appeal into the proceedings under Rule 137(5) EPC was correct.

5. In the present case, the version of Rule 137(5) EPC that entered into force on 1 April 2010 applies to the present application, because the supplementary European search report (hereinafter "SESR") under Article 153(7) EPC was drawn up on 22 December 2010, i.e. after 1 April 2010 (see Article 1(7) and Article 2(2) of the Decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 3/09), OJ EPO 2009, 299).

Rule 137(5), first sentence, EPC 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".

6. The SESR was to be drawn up on the basis of amended claims 1 to 22, which had been filed when the international application entered the European phase. However, the search division considered that the application did not meet the requirements of unity of invention (Article 82 EPC) because the claims contained the following three groups of inventions which did not share a common inventive concept:

- Claims 1 to 6 (the first group) were directed to a digital video camera comprising a horizon adjustment control for adjusting an orientation of the horizontal image plane with respect to the housing plane.

- Claims 7 to 14 (the second group) were directed to a digital video camera comprising a mounting mechanism (claims 7 to 13) and to a mounting mechanism adaptable for secure mounting of a camera housing to a support (claim 14).

- Claims 15 to 22 (the third group) were directed to a digital video camera comprising a manually operable switch for controlling operation of the image sensor.

In accordance with Rule 164(1) EPC (in the version which entered into force on 1 April 2010; see Decision of the Administrative Council of 27 October 2009 amending the Implementing Regulations to the European Patent Convention, OJ EPO 2009, 582 (CA/D 20/09)), the SESR was drawn up on those parts of the application which related to the invention, or the groups of inventions within the meaning of Article 82 EPC, first mentioned in the claims, i.e. in the present case only claims 1 to 6 relating to the horizon adjustment control (i.e. the first group of inventions).

7. As a consequence of this alleged lack of unity, the second and third auxiliary requests underlying the decision under appeal were not admitted into the proceedings by the examining division, because claim 1 of these requests contained "unsearched subject-matter associated with the second group of inventions identified during the supplementary European search", i.e. subject-matter relating to the mounting mechanism.

8. However, the board is of the view that claims 1 to 13 do not lack unity of invention (Article 82 and Rule 44 EPC) for the reasons set out below:

According to the search division, the special technical features (STFs) in the first group of inventions (claims 1 to 6 of the SESR) relate to the horizon adjustment control of the video camera, whereas the STFs in the second group of inventions (claims 7 to 14 of the SESR) relate to the mounting mechanism of the video camera.

However, claims 7 to 13 contain all the features of claim 1 and, hence, also the STF identified with respect to that claim 1, i.e. the horizon adjustment control.

9. Consequently, the search division should also have searched claims 7 to 13 of the SESR, including the features in those claims relating to the mounting mechanism, and the examining division should not have raised an objection under Rule 137(5) EPC against the second and third auxiliary requests underlying the decision under appeal on the grounds that claim 1 of those requests comprised unsearched features relating to the mounting mechanism.

10. The above findings also apply to the claims of the present main and first auxiliary requests, because they only differ from the claims of the second and third auxiliary requests underlying the decision under appeal in that a feature has been added in claim 1 (see point 2 supra).

11. Conclusion on the main and first auxiliary requests and the procedural consequence

Since the claims of the present main request and first auxiliary request comprise features relating to claims 7 to 13 of the SESR, which should have been searched but were not, the board considers it appropriate to remit the case to the examining division for further prosecution under Article 111(1), second sentence, EPC. The examining division is to perform an additional search for the combination of features of claims 7 to 13 and continue substantive examination on that basis.

Obiter dictum - second and third auxiliary requests

12. Since the case is remitted to the examining division for further prosecution on the basis of the appellant's main and first auxiliary requests, and the additional search to be carried out after remittal to the examining division is likely to reveal additional relevant prior-art documents, the board does not consider it necessary to decide on whether the subject-matter of claim 1 of the present second and third auxiliary requests (previously the appellant's main and first auxiliary requests, before the requests were reordered) involves an inventive step in view of the prior-art documents D1 and D3. However, a provisional non-binding opinion of the board on this matter of inventive step was expressed under points 6 to 14 of the board's communication pursuant to Article 15(1) RPBA.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution.