T 0779/11 - Refusal without search

Key points

• An examination appeal against refusal for a patent application for, essentially, a case law database. No search was carried by the EPO as ISA and no further search was carried out during the European phase. Does the lack of search constitutes a substantial procedural violation? The Board decides it is not. The decision of the EPO as ISA to issue a declaration of non-search is not open to review, because it has no legal consequences for examination.  
• The Board notes that Rule 137(5)  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 (that no international search report is established).

EPO T 0779/11  - link

Reasons for the Decision

3. Lack of a prior-art search

The appellant contested the correctness of the declaration issued under Article 17(2)(a) PCT and argued that the Examining Division had committed a substantial procedural violation by not carrying out a prior-art search. Article 92 EPC required the EPO to perform a search on the basis of the claims, including the dependent claims, with due regard to the description and any drawings. As confirmed by the Guidelines for Examination, the description was to be consulted with a view to establishing the technical problem and the existence of fallback positions. The Examining Division had focused only on claim 1, which had made it difficult for the appellant to know how to proceed. In addition, applicants paid money for having a search performed.

3.2 In the statement of grounds of appeal, the appellant stated that the Examining Division's decision not to perform a prior-art search on the basis of Rule 45 EPC 1973 at all was against the established case law of the Boards of Appeal. This statement is somewhat inaccurate in that it is not the Examining Division that issues the declaration under Rule 63 EPC (previously Rule 45 EPC 1973) that it is impossible to carry out a meaningful search, but the Search Division. And in the present case, it was the EPO acting in its capacity of International Searching Authority that issued the declaration under Article 17(2)(a) PCT taking the place of the European search report (Article 153(6) EPC).

This appeal lies from the decision of the Examining Division to refuse the application and not from the declaration under Article 17(2)(a) PCT. The Board is competent to review the correctness of the decision under appeal. In the context of that review, it may review the correctness of other decisions at most indirectly and only in so far as they form part of the legal foundation of the decision under appeal. In the present case, the decision of the EPO acting as International Searching Authority to issue a declaration under Article 17(2)(a) PCT did not have direct legal consequences for the examination proceedings and the decision to which those proceedings led. Its correctness is therefore not a subject of this appeal.

In this context it may be noted that Rule 137(5), second sentence, EPC as amended by decision CA/D 3/09 (OJ EPO 2009, 299) 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.

3.4 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. The Board may examine whether the Examining Division correctly handled this situation and in particular whether it should have carried out an "additional search" (i.e. a search carried out at the examination stage as provided for in the Guidelines for Examination, C-IV, 7.2) to make up for the lack of a search report.

In decision T 1242/04 (OJ EPO 2007, 421), the deciding board stressed the fundamental importance of the search as an element of the grant procedure (see reasons 8.2) and concluded that where an application's subject-matter had non-technical aspects, a declaration under Rule 45 EPC 1973 could be issued only in exceptional cases in which the claimed subject-matter, i.e. the entire set of claims including all independent and dependent claims, clearly had no technical character (see reasons 8.4). Although that provision is not identical to Article 17(2)(a) PCT (in combination with Rule 39.1 PCT), there appears to be no good reason why the same should not apply to the issuing of a declaration under Article 17(2)(a) PCT. In the present case, originally filed independent claim 1, directed to a system comprising a server coupled to one or more databases and a client access device coupled to the server via the Internet, already undeniably had technical character.

The board in decision T 1242/04 took the view, however, that in such circumstances it was not always necessary for the examining division to carry out an additional search in the documented prior art. In particular, it was legitimate to refuse an application for lack of inventive step where the objection was based on knowledge that was "notorious" or indisputably formed part of the common general knowledge (see reasons 9.2). This approach has been followed in a number of other decisions (see e.g. decisions T 688/05 of 19 September 2007, reasons 3; T 823/08 of 12 July 2011, reasons 12.4; T 1707/08 of 16 February 2012, reasons 3.4; T 359/11 of 13 May 2015, reasons 3.3 to 3.9; T 2467/09 of 17 December 2015, reasons 4).

Although the Board acknowledges that it is unfortunate if no prior-art search is undertaken where a search should be carried out, it sees insufficient reason to deviate from this established case law. In particular, it is not persuaded by the appellant's argument that a search is always necessary to allow the applicant to identify suitable amendments to overcome an objection of lack of inventive step. The requirement to reason its objections obliges an examining division raising an objection of lack of inventive step on the basis of undocumented notorious prior art to properly identify that prior art in the detail necessary to allow a comparison to be made between the prior art and the subject-matter claimed. The applicant is thus not confronted with "secret" prior art that it can only speculate about when drafting amended claims.

3.7 In the present case, the Examining Division based its objections of lack of inventive step on what it considered to be notorious prior art. The Board will therefore not remit the case to the Examining Division to perform an additional search without further examination of its merits.

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6. First auxiliary request - remittal

6.1 Claim 1 of auxiliary request 1 adds to claim 1 of the main request inter alia that the system comprises a "relationship database" that "relates" judicial decision documents to litigation documents. It is used to determine at least one litigation document related to a selected judicial decision document.

6.2 In its communication, the Board suggested that it would have been obvious to relate documents in a first collection to documents in a second collection by means of "relations" and that it would have been obvious to use a "relationship database" for storing such relations.

At the oral proceedings, the appellant argued that other ways could be conceived to implement the determination of a document in a first document collection related to a particular document in a second document collection. For example, a document may itself include an identification of the documents related to it.

6.3 The Board does not rule out that, at the priority date of the application, it was common general knowledge to relate or link data items in two different data collections by means of a separate database or database table listing the relations between the data items in the two collections. But the Board is not convinced that the existence of this knowledge at the priority date cannot reasonably be disputed, and at the oral proceedings the appellant in fact did dispute it. In such circumstances, the existence of common general knowledge needs to be proved by evidence. This means that an additional search has become necessary.

6.4 The case is therefore to be remitted to the Examining Division for further prosecution on the basis of auxiliary request 1 and in particular for carrying out an additional search.