T 0820/14 - Reviewing Rule 137(3) discretion

Key points

• The ED gave five grounds for not admitting the 2nd Auxiliary Request under Rule 137(3) EPC. In particular, claim 1 would be based on  non-searched original claim 10, lack unity of invention with the searched claims, and be non-convergent.
• The Board finds that feature added to claim 1 should have been searched, as it is a foreseeable implementation of the general features of original claim 1. Hence, the feature in fact not having been searched (i.e. not paying additional search fees during the international phase), has no effect. 
• The Board comments that the finding of unity (and 14 inventions) with the ISR was not sufficiently substantiated. The Board holds that lack of unity can not be based on the allegation that each of the dependent claims solves a different problem. 
• The Board agrees that the 2nd Auxiliary Request is not convergent and not prima facie allowable, and that therefore that the Examining Division could correctly decide to not admit it.
• The Board finds that it has a discretion to nevertheless admit the request into the procedure, despite G 7/93 stating essentially that the Board should only do so in case of abuse of the discretion in the first instance procedure. The Board finds that G 7/93 only uses " should", that a substantive review is desirable, and that it agrees with T 971/11. 
• The Board then finds that the 2nd Auxiliary Request lacks inventive step. 

EPO T 0820/14 -  link

(decision omitted)