T 1176/24 - Rule 137(5)

Key points

• Cases about Rule 137(5) were more frequent in the past (see my article in epi Information 2018/2).
• The EPO was ISA and requested an additional search fee for claim 93. The applicant did not pay. Operative claim 1 is based on the features of original claim 93.
• "The Examination Division [sic!] concluded not to admit the Main Request under Rule 137(5) EPC since the amendments to the claims of the Main Request were based on original claim 93 that was found to be non-unitary during the international search phase."
• The Board: "the Examination Division erred in its application of Rule 137(5) EPC by merely finding that original claim 93 did not meet the requirements of unity when assessed a posteriori. This criterion is irrelevant in the present context when applying Rule 137(5) EPC."
• The Board's analysis is correct; the correct legal basis in G 2/92 (for Euro-direct applications at least). See GL H-II 6.2 (2025): "Rule 137(5) cannot be invoked. It does not apply when the applicant has not paid the [additional search fee]."
• The Board does not explicitly state the legal basis for the current Euro-PCT application (I would say: G 2/92 mutatis mutandis), but analyses that claim 93 had unity of invention with a searched claim.
• "The Board is therefore convinced that claim 1 of the Main Request merely constitutes a restriction to a particular embodiment of the subject matter as claimed in the original claim 90 (with reference to original claim 1) and can be subordinated to the original general inventive idea."
• "The decision under appeal is therefore to be set aside."
• "The Board stresses that a supplementary search concerning the aspects arising from the original claim 93, now reflected in claim 1 of the Main Request, would be in accordance with due process should the Examining Division deem it necessary. Moreover, such supplementary search appears to be highly appropriate in the light of the Examining Division's findings set out in point 12.2 of the grounds for the decision under appeal."

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t241176eu1