T 1119/17 - Search after appeal

Key points

• In this examination appeal, the application was refused for Art. 123(2) and because the expression "dental surface adhesion enhancing agent" contravened the requirements of Articles 83 and 84 EPC.
• "The examining division took the view that the expression "dental surface adhesion enhancing agent" was unclear, since it had no generally accepted meaning. The Board shares this opinion and is not aware of any commonly accepted definition for the expression "dental surface adhesion enhancing agent". 
• " However, as a result of the amendment of the expression "comprises" into "consists of", the "dental surface adhesion enhancing agent" is now fully defined as consisting of uncomplexed cPVP. " 
• Therefore, Art. 83 and 84 are met. However, the EPO as ISA had issued a declaration of non-search under Article 17(2)(a) PCT because of excessive non-compliance with the substantive provisions. 
• The Board remits the case with the instruction that the ED must perform a search.
• This case illustrates that in case of refusal to search, the claims can be amended to address the issues, even in appeal, and that a search is to be performed once the formal requirements (clarity in particular) are met. 

EPO T 1119/17 - link

Remittal to the department of first instance

4. For the present application, filed under the PCT, the EPO, acting as International Search Authority, issued a declaration of non-establishment of International Search report under Article 17(2)(a) PCT because of excessive non-compliance with the substantive provisions. The declaration indicated that a search may be carried out during examination before the EPO should the problems which led thereto be overcome.

The appellant requests that the decision under appeal be set aside and that the case be remitted to the examining division to perform an additional search on the basis of said main request.

Remittal is taken into consideration by the boards in cases where a first instance department issues a decision solely upon one particular issue which is decisive for the case against one party and leaves other essential issues outstanding. If, following appeal proceedings, this party's appeal on the particular issue is allowed, the case is normally remitted to the first instance department for consideration of the undecided issues.

In the present case, the Board allows the appellant's appeal based on the amended main request, since this request overcomes the objections under Articles 123(2), 83 and 84 EPC laid out in the decision under appeal. Accordingly the case should be remitted for further examination. This should include that the examining division perform a search, as announced in the declaration under Article 17(2)(a) PCT.

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.