T 2021/15 - Rule 137(5) case

Key points

• This examination appeal is rather simple case about Rule 137(5) first sentence.  
• “The auxiliary request was not admitted [by the Examining Division] for the reason that it related to unsearched subject-matter which did not combine with the originally claimed invention to form a single general inventive concept (Rule 137(5) EPC).” “The assessment was based on a comparison between claim 1 of the auxiliary request and claim 1 as originally filed. ”
• The Board: “It might well be that the examining division was right in that there is no general inventive concept linking claim 1 of the auxiliary request and claim 1 as originally filed. However, this is moot because claim 1 of the auxiliary request has at least one special technical feature in common with claim 13 as originally filed, namely "sending each slice with a corresponding indication of what part of the image that slice represents". ” “Thus, there is no lack of unity between claim 1 of the present auxiliary request and claim 13 as originally filed.”
• “When rejecting amended claims as inadmissible* under this rule, it is not enough to show that an objection of lack of unity would have arisen if the amended claims had been part of the original claim set. It must be shown that the amended claim lacks unity with all claims in the original claim set, because each claim is part of the originally claimed "group of inventions". In other words, if there is unity with at least one of the original claims, Rule 137(5) EPC (first sentence) does not apply (see T 708/00 [])”
• * = T2431/19 recently held that Rule 137(5), second sentence, is about allowability, not about admissibility.
• “The search covered claim 13 as originally filed and should therefore have covered claim 1 of the present auxiliary request. This subject-matter is therefore not "unsearched" in the sense of Rule 137(5) EPC. Nevertheless, the examining division apparently considered this subject-matter to be unsearched (see point 12.9 of the decision under appeal). Furthermore, claim 1 of the auxiliary request contains further features of the embodiment in paragraph [0037] that were not present in the originally filed claims. Therefore, a further search might be necessary.”
• The feature taken from claim 13, related to the embodiment of paragraph [0037].
• See also my article in epi Information 2/2018, in particular footnoate 16 (“there is no legal basis for the Examining Division requesting an additional search fee if it considers that Search Division failed to note a lack of unity of invention”).

 T 2021/15 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t152021eu1.html