T 1167/21 - Rule 137(5) and unity a posteriori

Key points

• The Board, in translation: "This application is an international application pursuant to Article 153(2) EPC ("Euro-PCT application"). The European Patent Office, as the competent International Searching Authority (ISA), found that the subject-matter of claims 1 to 8 did not meet the unity requirement under Rule 13(1) PCT and identified four groups of inventions. Subsequently, after being invited to pay three additional search fees, which the appellants failed to comply with, only the first group of inventions, i.e., the subject-matter of claims 1 to 3, was searched to prepare the international search report."
• "The Examining Division took the view that the inclusion of feature (b) from the unsearched originally filed claim 5 in claim 1 according to the main request resulted in subject-matter which was not allowable under Rule 137(5), first sentence, EPC."
• The Board examines the substantive issue of unity of invention.
• " The amendments to claim 1 therefore do not result in a change from the first group of inventions to another, unsearched group of inventions addressing a different problem. Rather, the subject matter of the first group of inventions (claim 1 as filed, including feature a) is merely further restricted by the features of the originally filed claim 5 (feature b).
• However, Rule 137(5) EPC is at the outset not the right provision for issues relating to the non-payment of additional search fees, where those were requested. As the Guidelines state in H-II,6.2 : "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." The legal basis for EP-direct applications is G 2/92. For Euro-PCT applications, where the EPO was ISA, first the procedure of  Rule 164(2) is to be followed.
• Nevertheless, the Board's reasoning on the substantive issue is useful: "document D1, which was used for the a posteriori assessment of unity by the examining division, anticipates not only the features of claim 1, but also those of claims 2 (see D1, figures) and 3 (D1, linear motor 37). Thus, none of claims 1 to 3 has a special technical feature defined as mandatory that could constitute an invention or group of inventions."
• " Feature (a) (tilting axis arranged in the upper half of the container) was originally an optional feature of claim 1. This feature is not anticipated by document D1. It is therefore a special technical feature within the meaning of Rule 44(1) EPC, which determines a contribution to the prior art."
• "It is irrelevant for consideration as an invention that feature (a) is defined in the original version as an optional feature of independent claim 1, because according to Rule 44(2) EPC the decision as to whether the inventions of a group are related to one another in such a way that they implement a single general inventive concept must be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.
• As a comment, possibly a claim specifying "A widget with feature A and optionally feature B"  must be read as "A widget with feature A or with feature A and B".
• According to the international search report, the optional feature a) of claim 1 is part of the first group of inventions comprising claims 1 to 3 "
• "The claims resubmitted with the statement of grounds of appeal in the version dated 31 July 2019 do indeed include an additional group of features (feature b).
• However, this does not constitute a change to an unsearched invention. Such a change would only occur if claim 1 comprised only feature b) without the special technical feature a) of the first group of inventions (which would correspond to the subject matter of the mandatory features of the unsearched original claim 5). In contrast, the inclusion of the features from claim 5 in combination with feature a) is not a change to the unsearched group of inventions 3.
• This is because feature b) of the original claim 5, like all the features originally dependent on claim 1, was also disclosed in combination with the optional feature a)."

EPO

The link to the decision can be found after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t211167du1