Key points
- The Board sets aside a refusal decision based on Rule 137(5) EPC for lack of sufficient reasoning by the Examining Division.
- The Examining Division did not state whether the first or second sentence of Rule 137(5) was the legal basis. The Board assumes that it was the second sentence, which states that "Nor may [the amended claims] relate to subject-matter not searched in accordance with Rule 62a or Rule 63."
- The case at hand is a Euro-PCT application with the EPO acting as ISA. The EPO as ISA had limited the search under Article 17(2)(a) and (b) PCT ("the description, the claims, or the drawings, fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out").
- The applicant argues that a limitation under Article 17(2)(b) PCT is not a limitation under Rule 62a or Rule 63 EPC.
- The Board: "This question may require further discussion, but can remain open for the present case."
- The Board: "Even if the examining division were to be convinced that a procedure corresponding to Rule 62a/63 EPC had been carried out during the international phase, this, in any case, does not release the examining division from substantiating this view in the decision and from replying to the arguments put forward by the applicant. In addition, the decision should also have explained and justified the deficiencies mentioned in Rules 62a(1)/63(1) EPC that make a meaningful search impossible."
- The refusal decision did not identify these deficiencies and the decision is set aside. The case is remitted.
- As a comment, there are hence no ratio decidendi about how Rule 137(5), second sentence, works for Euro-PCT applications. It seems the literature is also silent about this.
- Addendum 07.02.203: GL 2023 C-IV.7.3 clarifies that in case of subject-matter not searched by the EPO as ISA, "Rule 137(5), second sentence, cannot be invoked in that context"
- Addendum 29.12.2022: R.164(3) appears to imply that R.137(5)(s.2) applies in case of a search or search incident under Rule 164(1) or (2). Moreover, Rule 164(2) refers to an invention that "was not searched by the European Patent Office in its capacity as [(S)ISA]" but does not state explicitly that the reason for the invention not being searched must be a lack of unity of invention under Art.17(3) PCT. The wording of R.164(2) seems to permit its application in the case of a non-search or partial search under Article 17(2) PCT.
Reasons for decision
1. The appeal is admissible.
2. The decision in the written procedure is admissible, since the complainant only requested oral proceedings as an alternative. As explained below, the board allows the appellant's main request and does not consider ex officio proceedings to be appropriate, Article 116(1) EPC.
3. The contested decision, insofar as it relates to the set of claims of the main request then and now in the proceedings, is justified with the following wording:
"1 main request
1.1 The patent applicant was of the opinion that the original main request was sufficinelty disclsoed and also researchable. The patent applicant further stated that the original main request should have been searched. Upon entry into the European phase, the patent applicant requested the removal of this limitation.
1.2 The PCT procedure is a self-contained procedure that is not related to the EP procedure. Nevertheless, the arguments were considered by the applicant. Since these arguments were not found to be relevant, the restriction on the restricted search carried out in the PCT proceedings was not lifted.
1.3 Claim 1 of the main request contains unsearched subject-matter and therefore does not meet the requirements of Rule 137(5) EPC."
4. This reasoning for the decision does not state, among other things:
how the main request on which the decision is based, which was submitted in the course of the examination procedure, is related to the "original main request" mentioned,
what is the unsearched subject-matter covered by claim 1 of the main request and why it could not be searched
why Rule 137(5) EPC is relevant in the present case, and
which applicant's arguments were "considered" and why these were found not relevant.
5. Pursuant to Rule 111(2) EPC, decisions which are the subject of an appeal must state the reasons on which they are based.
5.1 This provision has several purposes. First of all, the justification serves to enable the party(ies) concerned to understand why a decision in accordance with their requests was made or not. In order to protect a party's right to be heard, as enshrined in Article 113(1) EPC, it is not sufficient, according to the established case law of the Boards of Appeal, for the party concerned to be given the opportunity to comment. It must also be clear that their statements have been duly taken into account, see case law, 10th edition, Chapter III.K.3.4. In addition, reasons for the decision are a prerequisite for the Board of Appeal to be able to review the correctness of the decision in the appeal proceedings.
This obligation to justify is also found in the Examination Guidelines, EX, 1.3.3 and EX, 2.6. Accordingly, the decision must be reasoned with reference to relevant provisions of the EPC. Furthermore, any significant argumentation of a party to the proceedings must be carefully examined and discussed comprehensively in the decision.
In the present case, the examining division failed to comply with this duty to state reasons in various respects.
5.2 In the reasons for the decision on the main request, no arguments put forward by the applicant are presented, let alone analyzed and refuted.
Nor is there any specific reference in the reasoning for the decision to any communications that may have been made during the proceedings in which the factual and legal issues mentioned in the decision regarding the main application were dealt with.
This failure to address the arguments put forward by the applicant in the reasoning for the decision in itself constitutes a major procedural error, since the applicant's right to be heard was not protected.
5.3 The applicability of Rule 137(5) EPC, which served as the basis for the refusal, to the facts at hand is not self-explanatory; in any case, it would have required a justification. In this respect, the contested decision also suffers from a lack of reasoning.
5.3.1 Rule 137(5) EPC provides that amended claims may not relate to specific non-searchable subject-matter. Two cases are distinguished.
5.3.2 The first case relates to unresearched subject matter which is not related to the originally claimed invention by a single general inventive concept. Apparently this is not the case here; in any case, no objection to a lack of uniformity was raised during the procedure.
5.3.3 The second case relates to subject-matter which has not been searched under Rule 62a or Rule 63 EPC. These rules relate to the preparation of the European search report. As part of the procedure under Rules 62a/63 EPC, the search division may ask the applicant to explain which parts of the application are to be searched. Such a request may be made if the application is so inconsistent with the EPC that meaningful prior art determinations for the application as a whole appear impossible. A partial search report is then drawn up under Rule 62a(1)/63(2) EPC. According to Rule 62a(2) or 63(3) EPC, the examining division will later ask the applicant during the examination procedure to restrict the application to the subject-matter searched, unless
However, no procedure under Rule 62a or 63 EPC was carried out here, since the present application was filed as an international application under the PCT. The provisions on the EPO as designated or elected Office in Article 153 EPC, with the corresponding implementing provisions in Rules 159-165 EPC, do not provide for such a procedure upon entry into the regional phase.
5.3.4 Since the examining division used Rule 137(5) EPC as the basis for the decision without further justification, it seems to consider that the limited search carried out in the course of the PCT proceedings under Article 17(2)(b) PCT supersedes that Procedure under Rule 63 EPC. Paragraph 1.2 of the contested decision refers to the limited PCT search.
The applicant has argued that although the international search report replaces the European search report under Article 153(6) EPC, this does not mean that the procedure under Article 17(2)(b) PCT is equivalent to the procedure under Rule 62a/63 EPC be or replace this. In the context of the PCT, for example, in contrast to the procedure under Rule 62a/63 EPC, there is no provision for the applicant to be involved.
This question may require further discussion, but can remain open for the present case. Even if the examining division were to be convinced that a procedure corresponding to Rule 62a/63 EPC had been carried out during the international phase, this in any case does not release the examining division from substantiating this view in the decision and from the arguments put forward counter-arguments of the applicant. In addition, the decision should also have explained and justified the deficiencies mentioned in Rules 62a(1)/63(1) EPC that make a meaningful search impossible. The existence of such deficiencies was finally disputed by the applicant, see point 1.1 of the contested decision.
5.4 As is also apparent from point 1.1 of the decision under appeal, the applicant requested that an additional search covering the claims of the main request be carried out ("requested (...) the lifting of this limitation").
The appellant has rightly argued that the Examining Division is at liberty to initiate further research or to carry it out itself during the examination phase, even after the conclusion of the PCT proceedings. This is also explicitly foreseen in the Examination Guidelines, see C-IV, 7.2, even with regard to the procedure under Rule 63 EPC.
The examining division may have had reasons why this request was not granted. However, those reasons should have been discussed in the contested decision.
6. In summary, it can be stated that the contested decision lacks a comprehensible justification in several respects. However, such a procedure is prescribed for appealable decisions in Rule 111(2) EPC.
7. The lack of a comprehensible reason constitutes a substantial procedural violation (cf. eg T 278/00, OJ EPO 2003, 546, Guidelines; T 1411/07; T 306/09).
7.1 The Board therefore makes use of its discretion under Article 111(1) EPC and, in accordance with Article 11 RPBA 2020, remits the matter to the Examining Division for further decision as requested.
7.2 According to Rule 103(1)(a) EPC, the appeal fee is to be refunded in such a case, provided that the appeal is allowed as in the present case.
Order
For these reasons it is decided:
1. The contested decision is set aside.
2. The matter is referred back to the examining division for further decision.
3. The appeal fee will be refunded.
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