T 0145/13 - Rule 137(5) is not for non-searched claims

Key points

• In this examination appeal, the ED did not admit under Rule 137(5) EPC a request wherein claim 1 was amended to include the feature of claim 30 as pending when the supplementary European search report was established, because that claim 30 was directed to a fifth invention and no additional search fee was paid for that claim.
• However, Rule 137(5) requires that subject-matter is unsearched subject-matter and does not combine with parts of the originally claimed invention to form a single general inventive concept. Therefore, Rule 137(5) EPC does not apply. 
• As a comment, the Guidelines expressly say so in H-II. 7.2: " Rule 137(5) cannot be invoked. It does not apply when the applicant has not paid the search fee in respect of a non-unitary invention relating to the originally filed claims."
• Rather, Rule 164(2) (in the applicable version) should have been applied. " It is the intention of the second alternative of Rule 164(2) EPC to prevent the applicant from switching during the grant proceedings from searched subject-matter to ­subject-matter which had originally been claimed but not searched due to non-payment of the additional search fee (see T 442/11).
• As a note, Rule 164 does not spell out the consequence of not paying the additional search fee, in the applicable version it just mentioned that an invitation is issued to restrict the application. The actual legal basis for not admitting the request is G 2/92 and Rule 137(3) EPC (edit 07.10.2017: Rule 137(3) is not relevant, the claim is still to be refused even if filed in time under Rule 137(3) EPC). 
• The Board reviews whether the finding of lack of unity of invention in the ESR was correct. The ED based on a posteriori lack of unity in view of D1, but the cited paragraph of D1 is " merely an outlook on various possible future developments"  and does not provide an enabling disclosure. Therefore, it can not support the alleged lack of unity of invention. Claim 30 should have been searched and the request is admitted.. 

Reasons for the Decision

1. Main request

1.1 Rule 137(5) EPC

1.1.1 The claims of the main request are those of the first auxiliary request before the examining division. In the decision, the division held that this request was not accepted into the procedure for violation of Rule 137(5) EPC, because the features "adaptive cruise control", "collision warning or avoidance", "exterior light control imaging", "blind spot warning" and "night vision" of claim 1 of this request formerly constituted the fifth and unsearched invention as identified in the supplementary European search report (see point 5 of the decision).

1.1.2 The appellant argued that each of the features pointed out by the examining division related to a further limitation of the searched automotive equipment control system. Since this had been searched, the further limitations also had to be considered searched subject-matter. Hence, the claims of the present main request had to be admitted into the proceedings.

1.1.3 The board notes that, since the supplementary European search report of the application was drawn up after 1 April 2010, in the present case Rule 137 EPC in the version as amended with decision of the Administrative Council of 25 March 2009 applies (OJ EPO 2009, 299). The first sentence of Rule 137(5) EPC in this version is identical with Rule 86(4) EPC 1973, which was intro­duced into the Implementing Regulations of the EPC in order to avoid that an applicant switches - e. g. by way of incor­po­rating a feature from the description - to unsearched subject-matter which was not claimed at the search stage (see the decision T 442/11 of the Boards of Appeal, Reason 2.2.2).

However, in the present case the subject-matter of claim 1 of the main request corresponds essentially to the combination of the features of claims 7, 8, and 30 underlying the supplementary search report (filed with the entry into the European phase on 21 Septem­ber 2005). [note: claims 1, 7 and 8 being searched, claim 30 not being searched]. Therefore, the claims cannot be considered as having been amended in such a way that they relate to unsearched subject-matter which does not combine with parts of the originally claimed invention to form a single general inventive concept. Rule 137(5) EPC is therefore not contravened.

This is in line with the reasoning of the decisions of the Boards of Appeal T 507/11 (see Reasons 1.1 to 1.3), T 1285/11 (see Reason 2), T 1981/12 (see Reasons 4.1 to 4.5), and T 998/14 (see Reasons 1.1 to 1.3) dealing with similar circumstances.

1.2 Rule 164(2) EPC

1.2.1 The board further notes that for the present Euro-PCT application, Rule 164(2) EPC is also relevant, namely in the version as amended with decision of the Administrative Council of 27 Octo­ber 2009, which applies to the present case (OJ 2009, 582).

It is the intention of the second alternative of Rule 164(2) EPC to prevent the applicant from switching during the grant proceedings from searched subject-matter to ­subject-matter which had originally been claimed but not searched due to non-payment of the additional search fee (see T 442/11, Reason 2.3.2).

1.2.2 As indicated above, the subject-matter of claim 1 of the first auxiliary request corresponds essentially to the combination of the features of claims 7, 8, and 30 underlying the supplementary search report, which was attributed in the supplementary European search report to the fifth invention and thus not searched.

Therefore, it has to be assessed whether it was justified not to search said fifth invention in preparation of the supplementary European search report. In the decision there is no justification in this respect (see point 5 of the Reasons). In "Sheet B" of the supplementary search report the claims were considered to lack unity a posteriori in view of document D1, which was considered to disclose the subject-matter of claim 1.

Claims 1-3, 7-11, 17-21, 23-29, 36, 37, 40, 41, 49, and 50 underlying the supplementary search report were attributed to the first invention with the special technical feature of a dual port memory specified in claim 2, which was considered to solve the objective technical problem of providing "a transceiver with a memory so that it can be accessed at two ports".

Claims 30-35, 42, 45 underlying the supplementary search report were attributed to the fifth invention with the special technical feature of a device type to be controlled by the automatic vehicle control system, which was considered to solve the objective technical problem of providing an "automatic vehicle control system which is able to control a device of a special type".

With reference to document D1, page 25, right-hand column, para­graph 5, document D1 was considered to disclose an auto­matic vehicle equipment control system. In the cited paragraph the following is stated: "As the CMOS image sensor array technology evolves, and process line widths continue to decrease, we expect to see [...] (5) low-cost, low-resolution sensors that allow intelligent machine vision functions to be added to consumer items such as automobiles and home appli­ances" (emphasis by the board). This statement is merely an outlook on various possible future developments. There is no enabling disclosure in document D1 concerning these conjectured developments at all. Moreover, it is not even mentioned what role the sensors could play in the automobile, in particular there is no indication that the sensors could be used in a vehicle equipment control system. Document D1 is therefore not considered to disclose an auto­matic vehicle equipment control system. This feature can therefore be considered an inventive concept joining the first and fifth invention as subdivided in "Sheet B" of the supplementary search report.

Therefore, it cannot be considered justified that the fifth invention indicated in the supplementary search report was not searched in preparation of the European supplementary search.

1.2.3 Consequently, the provisions of Rule 164(2) EPC cannot be invoked against the amendments in relation to the claims of the main request, either (see also T 442/11, Reasons 2.3 and 2.4).

2. Conclusion

In view of the above, the application is to be remitted to the examining division (Article 111(1) EPC 1973) for further prosecution involving, if necessary, a further search.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.