Summertime reading - Rule 137(5) EPC - Article in epi Information
Regular readers are likely aware that Rule 137(5) appears quite frequently in the case law and in this blog (see here for an overview). I have tried to shed some light on it in my recently published article in epi Information.
If the applicant limits its independent claim by features taken from the description, it has always been tempting to declare the features from the description as "not searched subject-matter", whether it was R 137(4) or now R 137(5).
Normally an examiner should carry out a further search in this case. But he gets no reward for it, hence the temptation. Defining such matter as unsearched is not correct, and actually represents a misuse of the rule.
In T 2156/13, AR 4 has not been admitted during OP as it allegedly comprised non-searched matter. The added limitation was indeed taken from the description, exactly from the summary of the invention (p4, end of first §).
It is a bit far fetched to claim that the subject-matter then claimed does not form unity with the rest of the claim.
That the amendment was late and probably could not overcome the raised objections is certainly more convincing, but then the non-admissibility should have been justified under R 137(3) and certainly not under R 137(5)!
As the applicant did file new AR when entering appeal, he did not bother querying this point.
It is however advisable not to let ED going away with such tricks.
On the topic of Rule 137(5), the chapter of Preller in Singer/Stauder/Lugingbuhl 8th ed. Art.94, rdn.74-80 can be recommended. Preller starts with the observation that if an amended claim is directed to unsearched subject matter, an additional search is carried out if the that subject matter is connected with the originally claimed invention or inventions by a general inventive concept.
Do not use hyperlinks in comment text or user name. Comments are welcome, even though they are strictly moderated (no politics). Moderation can take some time.
I fully support the article.
ReplyDeleteIf the applicant limits its independent claim by features taken from the description, it has always been tempting to declare the features from the description as "not searched subject-matter", whether it was R 137(4) or now R 137(5).
Normally an examiner should carry out a further search in this case. But he gets no reward for it, hence the temptation. Defining such matter as unsearched is not correct, and actually represents a misuse of the rule.
In T 2156/13, AR 4 has not been admitted during OP as it allegedly comprised non-searched matter. The added limitation was indeed taken from the description, exactly from the summary of the invention (p4, end of first §).
It is a bit far fetched to claim that the subject-matter then claimed does not form unity with the rest of the claim.
That the amendment was late and probably could not overcome the raised objections is certainly more convincing, but then the non-admissibility should have been justified under R 137(3) and certainly not under R 137(5)!
As the applicant did file new AR when entering appeal, he did not bother querying this point.
It is however advisable not to let ED going away with such tricks.
Thanks for your comment of 21.07. Moderation took a bit more time due to the holidays.
ReplyDeleteOn the topic of Rule 137(5), the chapter of Preller in Singer/Stauder/Lugingbuhl 8th ed. Art.94, rdn.74-80 can be recommended. Preller starts with the observation that if an amended claim is directed to unsearched subject matter, an additional search is carried out if the that subject matter is connected with the originally claimed invention or inventions by a general inventive concept.
ReplyDelete