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.

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.

T 0140/21 - Rule 137(5)

Key points

• The Examining Division refuses amended claims of an auxiliary request under Rule 137(5), first sentence.
• "in its reasons the Examining Division argued that "original claim 1 was concerned with solving the problem of platform-independent graphics rendering, but the amended features are concerned with solving the different problem of handling and processing input gestures"
• For [Rule 137(5)] to apply, it must thus be shown (i) that the amended claims relate to unsearched subject-matter and (ii) that they lack unity with the originally claimed invention or group of inventions".
• The Examining Division argues that "These amended features could not have been expected to be searched since they do not relate to the originally claimed invention nor are they disclosed in combination with the originally claimed invention in a specific embodiment of the originally filed description".
• The Board considers this assertion to be inaccurate. " Although the International Search Authority had identified three separate inventions, only the second and third of which contained the gesture-related features, all were even­tually searched (see the Written Opinion of the Inter­national Search Authority, 5 June 2014, Box No. IV and Box No. V). Moreover, original claim 10 contained both the gesture-related features and referred to "platform independent graphics rendering" (reciting a "generic scene graph [...] executable on a plurality of different technology platforms")."
• "Original claim 10 having been searched, the Board has no doubt that the subject-matter of the claims of the third auxiliary request was also searched."
• As a comment, I find this reasoning of the Board to be less helpful. Rule 137(5), first sentence, is not concerned with the payment or not of additional search fees, because that is addressed by G 2/92 (see my article). Because the feature is specified in original claim 10, the amended claim likely has unity of invention of invention with original claim 10, which is sufficient for Rule 137(5) to be inapplicable. If the context of the feature is different between original claim 10 and the current claim such that there would be an additional lack of unity of invention if the current claim was to the original set of claims (over and above any lack of unity between the original claims themselves), then likely the feature was not searched in the context of current claim 1 either.
• " The Board concludes that Rule 137(5) EPC, first sentence, does not preclude consideration of the third auxiliary request. "
• "It is therefore up to the Examining Division during the further prosecution to decide again on their consent under Rule 137(3) EPC to this amendment."
• The case is remitted.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0416/19 - Rule 137(5)

Key points

•  The applicant appealed the decision to refuse the application.
• "The decision under appeal was based on the grounds that the main request was not admitted into the proceedings under Rule 137(5) EPC and the subject-matter of claim 1 of the auxiliary request did not involve an inventive step within the meaning of Article 56 EPC."
• "This board endorses the view expressed in T 2431/19, points 2.2 and 2.3 that Rule 137(5) EPC does not provide a legal basis for the exercise of discretion, i.e. for not admitting the amended set of claims into the proceedings."
• ", the examining division based its objection on the fact that amended claim 1 added the feature of displaying a timeline (see decision under appeal, point 14.3). This board endorses the view taken in T 1866/15, points 3.8 and 3.13 that there cannot be a lack of unity between two claims where one limits the subject-matter of the other."
• "Hence, if claim 1 of the second auxiliary request had been present in the set of claims on file at the time of the search, no objection of lack of unity would have been raised."
• " the board finds that the decision of the examining division not to admit the second auxiliary request under Rule 137(5) EPC was not justified."
• However, after some analysis, " the board finds that the subject-matter of claim 1 of the second auxiliary request does not involve an inventive step within the meaning of Article 56 EPC."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2146/19 - Rule 137(5), second sentence and Euro-PCT

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.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

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

T 1866/15 - Rule 137(5) case

 Key points

• The Examining Division did not admit a claim request under Rule 137(3) because of non-compliance with Rule 137(5) first sentence.
• The Board follows T 2431/19 that Rule 137(5) pertains to allowability. 
• “For this reason alone, the decision not to admit under Rule 137(3) EPC is incorrect and the auxiliary request is to be taken into account in accordance with Article 12(4) RPBA 2007.”
• “the board does not agree with the decision as regards Rule 137(5) EPC.”
• “The board agrees with the general statement (see also Guidelines H-II, 6.2) that, in order to assess whether or not amended claims fulfil the requirements of Rule 137(5) EPC, first sentence, it needs to be established whether or not an objection of lack of unity would have been raised if the amended claims had been present in the set of claims on file at the time of the search.”
• This is indeed established case law, see my article in epi Information 2018/2. 
• “The board takes the view that there cannot be a lack of unity between two claims where one strictly limits the subject-matter of the other. Accordingly, original claim 1 cannot lack unity with present claim 1, which is a strict limitation of original claim 1.”
• As a comment, I'm not sure what a ‘strict limitation’ is in this context.
• The Board: “ If, for example, claim 1 lacked novelty a posteriori and a "special technical feature" of the original set of claims was contained in claim 2, then the amendment of claim 1 by incorporation of another "special technical feature" with an unrelated effect could lead to the situation that amended claim 1 and original claim 2 lacked unity and that, accordingly, the amendment could not be allowed under Rule 137(5) EPC. ”
• As a comment, I'm not sure what lack of novelty 'a posteriori' means here (I guess it is opposed opposed to lack of novelty 'a priori', but I don't know what that means in this context). 
• But I agree that the amendment can not be allowed in this case.
• “If, however, the original "special technical feature" was contained in original claim 1, then the addition of another, even unrelated, "special technical feature", could not introduce a lack of unity between original and amended claim 1. Accordingly, such an amendment cannot be objected to under Rule 137(5) EPC.”
• Lack of novelty 'a posteriori' suggests to me that claim 1 contains a special technical feature, but then the claim would be novel and inventive over 'the prior art at hand' (Rule 44(1): “The expression "special technical features" shall mean those features which define a contribution which each of the claimed inventions considered as a whole makes over the prior art.”).
• The Board: “if an amendment introduces a feature with an effect entirely unrelated to the effects of the original claims, this might well be a sound basis for the examining division to deny its consent under Rule 137(3) EPC”
• “since amended claim 1 is a strict limitation of original claim 1, there cannot be a lack of unity and thus there is no violation of Rule 137(5) EPC.”
• “Therefore, the board considers the subject-matter of claim 1 of auxiliary request 1 to involve an inventive step over D2.”
• The case is remitted for an additional search. “Since the board considers it probable that the search for present claim 1 did not cover the additional feature taken from the description ([58]), it is not in a position to order the grant of a patent. ”
• The purpose of Rule 137(5)(s.1) is precisely to avoid  (unpaid) additional searches being necessary if the applicant takes a feature from the description that was correctly not searched during the search stage.

(edited 16.10.2021)

T 1866/15 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t151866eu1.html

3. Admittance of auxiliary request 1 under Rule 137(5) and (3) EPC

3.1 The examining division decided not to admit the main request under Rule 137(3) EPC because it did not meet the requirements of Rule 137(5) EPC (first sentence).

3.2 The board considers that Rule 137(5) EPC, first sen­tence, constitutes a substantive requirement on amended claims, and endorses the findings of T 2431/19 on this point. If an amendment does not comply with Rule 137(5) EPC, it is not allowable on that ground alone and the examining division no longer has discretion whether or not to admit it under Rule 137(3) EPC.

3.3 For this reason alone, the decision not to admit under Rule 137(3) EPC is incorrect and the auxiliary request is to be taken into account in accordance with Article 12(4) RPBA 2007.

T 2431/19 - Rule 137(5) is not discretionary

 Key points

• The Examining Division held amended claims inadmissible under Rule 137(5) EPC, second sentence.
• “The board is aware that the Guidelines for Examination in the EPO uses terminology relating to "admittance" in connection with Rule 137(5) EPC (see, for instance, the applicable edition of November 2018, F-IV, 3.3, fourth paragraph: "such amendments may not be admitted"; H-II, 6.2, third paragraph: "such amendments are not admissible"). Moreover, some decisions (e.g. T 789/07 []) apparently endorse the reliance on Rule 137(5) EPC regarding a discretionary decision in first-instance proceedings on admittance of a claim request into the proceedings [note: also recent decision T0390/18]. 
• However, the board holds that Rule 137(5) EPC, as opposed to Rule 137(3) EPC, does not confer any discretionary power to the examining division for the reasons set out below” [analysis omitted]
• “ the question whether a patent application is refused on the grounds that a sole claim request is not admitted into the examination proceedings or is not held allowable under Rule 137(5) EPC does not constitute merely a trifle or an academic issue. The difference between such an assessment in full and in a prima facie way in the context of admittance is that the latter does not extend beyond what is necessary to justify the non-admittance decision (see T 2324/14, Reasons 2.2.2). Furthermore, such "[a] prima facie judgment is one which is made at first sight and is commonly understood to be one assumed to be correct until proven otherwise" so that it "may not survive further scrutiny and may turn out to be incorrect on further investigation" (cf. T 2324/14, Reasons 2.4). Thus, it can indeed be decisive for the outcome of a case whether a claim set is examined only in a prima facie way or in full.”
• There is also a critical difference with respect to Art. 12(6) first sentence RPBA 2020.
• “ In the present case, the examining division took a decision on the admittance of the claim request and based this decision exclusively on Rule 137(5), second sentence, EPC, i.e. without reference to Rule 137(3) EPC in conjunction with the well-established criterion of "clear allowability". However, relying exclusively on Rule 137(5) EPC would have required the examining division to examine compliance with that provision in full, not only in a prima facie way in the context of an admittance decision. Alternatively, the examining division could have relied on Rule 137(3) EPC as a legal basis for exercising discretion in the context of an admittance decision. Having done neither, the examining decision exercised discretion on the basis of a Rule - i.e. Rule 137(5) EPC - which does not confer any discretion”
  
  
• The Board also gives a valuable analysis of Rule 63 EPC. However, the case is a bit unusual because the search division had actually searched all claims while at the same time stating that the search was restricted under Rule 63 EPC. Another aspect that makes the case atypical is that, in the end, according to the Board “the network manager of present [i.e. amended] claim 1 must be the same as the network manager of original claim 1. Since the search division apparently included original claim 1 in their search [], the results of this search must be relevant for present claim 1 as well.” So according to the Board, amended claim 1 was in effect searched. 
• 
  
• The Search Division had limited the search under Rule 63 EPC: “ the search division had indicated that "the application has, de facto, no technical feature" because the verbs in the description as a whole "are always used in conjunction with the word 'may'"”
• As a comment, I think the Examining Division actually should have invoked Rule 137(5) first sentence, which deals with taking features from the description, as was done with the amendment in the present case. The requirements for holding the amendments inadmissible under Rule 137(5) first sentence are not fulfilled if the amended claim specifies the same subject-matter as original claim 1, as the Board found, but that is a distinct issue. 
• The Board finds the restriction of the search under Rule 63(1) to be invalid: “A prerequisite under Rule 63(1) EPC is that it must be "impossible to carry out a meaningful search regarding the state of the art on the basis of all or some of the subject-matter claimed" (emphasis added). In the current case, this prerequisite was not met, given that the search was carried out by the search division with regard to all of the original claims. ”
  
  
• “Given that a search division's decision to restrict the search is not subject to appeal and thus cannot be overturned (cf. T 1895/13, Reasons 3, last paragraph), it must be assessed whether the examining division, being of the opinion that present claim 1 comprises amendments relating to unsearched subject-matter (cf. points 3.3.3 and 3.3.4 below), should have conducted an "additional search" (see e.g. T 1873/06 [...])”
• As a comment, I think the Board here tacitly applies the rule that the second sentence of Rule 137(5) must be understood as: “Nor may they relate to subject-matter not searched in accordance with a correct application of Rule 62a or Rule 63”. 
  
  
• The Board: “it should be emphasised first that the expression "subject-matter not searched in accordance with Rule 62a or Rule 63" of [Rule 137(5)(s.2)]  must necessarily relate to claimed subject-matter (see in this respect the term "subject-matter claimed" in Rule 63(1) and (2) EPC as well as the requirement in Rule 63(3) EPC to restrict the claims to the subject-matter searched; emphasis added). While present claim 1 may somehow relate to unsearched subject-matter per se, such unsearched subject-matter was not part of the claimed subject-matter (cf. point 3.3.8 above). Hence, present claim 1 cannot relate to subject-matter not searched within the meaning of Rule 137(5), second sentence, EPC.”
• I note that Rule 137(5) first sentence deals with switching to different inventions from the description after the search phase.

Headnote
Rule 137(5) EPC provides for a mandatory requirement that amended claims must fulfil to be allowable. Relating to substantive law rather than to procedural law, Rule 137(5) EPC does not provide a legal basis for the exercise of discretion. The non-admittance of an amended set of claims on the basis of that Rule alone therefore constitutes a substantial procedural violation under Rule 103(1)(a) EPC (see point 2.2 of the Reasons).

T 2431/19 - 
https://www.epo.org/law-practice/case-law-appeals/recent/t192431eu1.html

Reasons for the Decision

2. Review of the non-admittance decision on the basis of Rule 137(5) EPC

2.1 In point II.11 of the decision under appeal, the examining division stated that "[t]he amended claims [...] cannot be admitted into the procedure pursuant [to] Rule 137(5) EPC", and in point II.15 that they "are not admitted in the procedure pursuant to Rule 137(5) EPC". In the absence of any (admitted) claims in the proceedings, the examining division refused the application (cf. Article 78(1)(c) EPC).

2.2 The board understands from these conclusions that the examining division invoked Rule 137(5) EPC to exercise a discretion with respect to the admittance of the applicant's sole claim request.

The board is aware that the Guidelines for Examination in the EPO uses terminology relating to "admittance" in connection with Rule 137(5) EPC (see, for instance, the applicable edition of November 2018, F-IV, 3.3, fourth paragraph: "such amendments may not be admitted"; H-II, 6.2, third paragraph: "such amendments are not admissible"). Moreover, some decisions (e.g. T 789/07, Facts and Submissions II and Reasons 11) apparently endorse the reliance on Rule 137(5) EPC regarding a discretionary decision in first-instance proceedings on admittance of a claim request into the proceedings.

However, the board holds that Rule 137(5) EPC, as opposed to Rule 137(3) EPC, does not confer any discretionary power to the examining division for the reasons set out below:

2.2.1 Rule 137(3) EPC provides that "[n]o further amendment may be made without the consent of the Examining Division" (board's emphasis). In the context of Rule 137(1) and (2) EPC, this means that any second and further amendment to the description, claims and drawings of a European patent application requires the consent of the examining division. This makes the admittance of such a further amendment a matter of discretion for the examining division (see e.g. T 233/12, Reasons 6). The admittance of an amendment under Rule 137(3) EPC is a procedural matter which is distinct from matters relating to substantive law (see T 1775/12, Reasons 8 and 8.1).

T 0390/18 - Rule 137(5) discretionary?

Key points 

• In this examination appeal, the Examining Division had refused to admit an auxiliary request under Rule 137(5). 
• In the auxiliary request, a feature is added taken from the description. The Board considers that the added feature is directed to a different problem than the original claims, such that it lacks unity of invention with the claims as filed. The decision does not indicate that the applicant had disputed this. This also seems a straightforward and correct application of Rule 137(5), first sentence, to me.
• However, the Board adds, in translation, “The board also notes that, under G7/93, a board of appeal should only overturn a discretionary decision by an examining division if it concludes that the examining division is exercising its discretion on the basis of the wrong criteria, disregarding the correct criteria, or in an arbitrary or arbitrary manner. inappropriately exercised. In the present case, the appellant only questioned the outcome of the discretionary decision, not the way in which the department exercised its discretion.”
• However, Rule 137(5) reads: “Amended claims may not [dürfen ... nicht / ne doivent pas] relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept”. In my view, this can only be understood as meaning that the Examining Division must refuse such amended claims and that Rule 137(5) first sentence can not be used as a ground for not admitting the claims if the two cumulative requirements of that sentence are not met. Hence, Rule 137(5) seems non-discretionary. However, the Examining Division is not barred from carrying out a further search (C-IV 7.2 and 7.3) in which case the subject matter could possibly become searched in the sense of Rule 137(5).* However, I'm not sure if this is what the Board means. 
• * I expressed the same view in my article in epi Information 2/2018, footnote 17.

T 0390/18

https://www.epo.org/law-practice/case-law-appeals/recent/t180390du1.html

Sachverhalt und Anträge

I. Die Beschwerde der Patentanmelderin richtet sich gegen die Entscheidung der Prüfungsabteilung, mit der die europäische Patentanmeldung Nr. 06 724 073.9 zurückgewiesen worden ist. Die angefochtene Entscheidung beruhte auf den Anträgen der Patentanmelderin, ein Patent auf Grundlage des in der mündlichen Verhandlung vom 13 Oktober 2017 geänderten Hauptantrags oder ersten Hilfsantrags zu erteilen. Diese Anträge bleiben für das Beschwerdeverfahren relevant.

[...]

Der erster Hilfsantrag wurde nach Regel 137(3) EPÜ nicht zugelassen, weil die hinzugefügten Merkmale mit der ursprünglichen Erfindung nicht durch eine einzige allgemeine erfinderische Idee verbunden seien und nicht recherchiert worden seien (Regel 137(5) EPÜ).

Entscheidungsgründe

2. Hilfsantrag

2.1 Auf Seite 11, Zeilen 8 bis 14 der Beschreibung der vorliegenden Anmeldung sind die Erhöhungen 100, die Vertiefungen 101 und der Stapelrand 31 (Merkmale M und N) beschrieben, sowie die technischen Wirkungen, die sie erzielen.

T 1435/13 - Completeness of the search

Key points

• In this examination appeal, the Board concludes that claim 1 is novel and inventive in view of the documents cited in the search report. The question then arises if perhaps other documents not yet on file teach the features at issue.
• “In the communication accompanying the summons to oral proceedings, the Board had some doubts whether the aspect of a plurality of group interrupt controllers had been sufficiently searched. However, since this subject-matter was present in claim 7 and 8 as originally filed, which are indicated as searched in the search report, the Board must be able to assume that it was searched completely.”
• The Board therefore orders the grant of the patent.
  
• As a separate matter, the appellant requests reimbursement of the appeal fee due to a substantial procedural violation. “The appellant argued that the examining division's failure to deal with all the independent claims of the then main request constituted a substantial procedural violation”.
• “The Board does not consider that the appeal fee should be reimbursed. Whilst it might have been desirable that the decision under appeal included reasoning with respect to all independent claims and thus also claim 9, the fact that claim 1 of the main request did not fulfill the requirements of the EPC meant that the main request could not be allowed, even if independent claim 9 complied with the requirements of the EPC. As the examining division decided on all requests before it, the Board does not consider that a substantial procedural violation occurred.”

EPO T 1435/13 - link



Thus, the Board judges that the subject-matter of claim 1 of the auxiliary request involves an inventive step over D1 (Article 56 EPC).

3.5 No objection was raised during the examination proceedings based on documents D2 to D4 and the Board considers the disclosure in those documents to be no more relevant than that provided by D1 and D5.

4. Completeness of the search

4.1 In the communication accompanying the summons to oral proceedings, the Board had some doubts whether the aspect of a plurality of group interrupt controllers had been sufficiently searched. However, since this subject-matter was present in claim 7 and 8 as originally filed, which are indicated as searched in the search report, the Board must be able to assume that it was searched completely.

T 1871/14 - Rule 137(5) and single general inventive concept

Key points

• The Board, about Art. 83 of the Main Request in this examination appeal: "[t]he only passage describing an embodiment of the invention on pages 47 to 58 of the 175 page A2-publication is completely silent about the contested claim feature of an area of the 1931 CIE chromaticity diagram. It also contains no indication as to whether the embodiment provides the claimed difference in correlated colour temperatures. The remaining 164 pages are nothing more than copies of claim wording and repetitions." The Board considers the invention to be insufficiently disclosed.
• Turning to AR-2, the Board notes that "[w]ith this request, filed with the statement of grounds of appeal, this technical concept [about a ratio of first and second power lines] has been claimed for the first time during the European phase of the application. Thus, this concept is not covered by the supplementary European search. Moreover, this concept does not combine with the invention as originally claimed in claims 1 to 15 as filed upon entry into the European phase to form a single general inventive concept, which like the claims of the present main and first auxiliary requests were characterised by properties of the light emitted by the device, such as correlated colour temperatures [...]. Therefore, the subject-matter of the second auxiliary request constitutes an inadmissible amendment in the sense of Rule 137(5) EPC. Should the appellant have wished to pursue subject-matter of this nature, they should have filed corresponding claims upon entry into the European phase of the application." 
• The Board however then combines this holding about Rule 137(5) with Article 12(4) RPBA: “In that context, with respect to Article 12(4) RPBA, because the second auxiliary request relates to a different invention not covered by the supplementary European search, it clearly could and should have been filed before the department of first instance. [] Consequently, the board exercised its power under Article 12(4) RPBA to hold inadmissible the second auxiliary request.”
• As a comment, I see no advantage in adding Article 12(4) RPBA for holding a request inadmissible that is already inadmissible under Rule 137(5) EPC. 
• On the other hand, I like how the  Board states that the two cumulative requirements of Rule 137(5) are met: “this concept is not covered by the supplementary European search. Moreover, this concept does not combine with the invention as originally claimed in claims 1 to 15 as filed upon entry into the European phase to form a single general inventive concept” (emphasis added). 

EPO T 1871/14 -  link

Reasons for the Decision

1. Admissibility of the appeal

The appeal was filed in due time and form and sufficiently substantiated. Thus, the appeal is admissible.

2. Main request and first auxiliary request

Clarity (Article 84 EPC)

2.1 The independent claims 1 and 11 according to the main request as well as independent claims 1 and 10 according to the first auxiliary request define the claimed subject-matter merely by a result to be achieved.

2.2 The appellant's argument, that the examining division had never raised an objection under Article 84 EPC against claim 1 does not take into account point 2.6.5 on page 14 of the contested decision, where former claim 2, the features of which are contained in the independent claims of the present main request and auxiliary request, was found not to comply with the requirements of Article 84 EPC, because it lacked essential features. Besides that, the appellant's argument has no bearing on the decision because the board can, according to Article 111(1), 2nd sentence EPC, exercise any power within the competence of the department which was responsible for the decision appealed. Thus, in appeal proceedings concerning a decision of an examining division, the board may even raise new objections which did not form part of the contested decision at all.

2.3 The board is also not convinced by the appellant's substantive arguments with respect to Article 84 EPC.

T 2824/18 - Rule 137(5) and unity

Key points

• In this appeal against a refusal, claim 1 as pending corresponds to claim 16 as originally filed. Claim 16 was not searched, claims 1-15 had been searched. The application was refused because the request did not meet the requirement of Rule 137(5) EPC according to the Examining Division.
• The Board finds that claim 16 as filed has unity of invention with claims 4 and 5 as filed, which were searched. 
• " Es ist nun für die Kammer nicht erkennbar, warum eine Getriebeeinrichtung, mit einer variablen Übersetzung (nach Anspruch 5), die gemäß Anspruch 16 mit einem Umlaufgetriebe realisiert werden soll, eine weitere Erfindung darstellen soll. Nach Ansicht der Kammer wird mit Anspruch 16 (wie ursprünglich eingereicht) lediglich eine besondere Ausführungsform einer Getriebeeinrichtung beansprucht." 
• The Board does not comment on whether Rule 137(5) EPC is the relevant legal basis at all. To cite the Guidelines, H-II 7.2 "If the application is restricted to an unsearched but originally claimed invention, it can be refused under Rule 64 in line with G 2/92 [...] 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." (see also my article in epi Information 2018/2).

EPO T 2824/18 -  link

Sachverhalt und Anträge

I. Die Beschwerde richtet sich gegen die Entscheidung der Prüfungsabteilung des Europäischen Patentamts, die am 6. Juli 2018 zur Post gegeben wurde und mit der die europäische Patentanmeldung Nr. 11708194.3 aufgrund des Artikels 97 (2) EPÜ zurückgewiesen worden ist.

II. Die Prüfungsabteilung hat im Wesentlichen festgestellt, dass mit den Änderungen des Anspruchs 1 gemäß Hauptantrag und Hilfsantrag 1 auf einen nicht recherchierten Gegenstand gewechselt wurde, insbesondere dass die Merkmale des Anspruchs 16 wie ursprünglich eingereicht zu einer weiteren - nicht recherchierten -Erfindung gehören und die dem geltenden Anspruch 1 gemäß Hauptantrag und Hilfsantrag 1 hinzugefügten Merkmale zweifelsfrei der Erfindung des ursprünglichen Anspruchs 16 zuzuordnen sind, siehe Punkt 32 der Entscheidung. Daher waren die Anträge gemäß Regel 137 (5) EPÜ nicht zuzulassen.

Entscheidungsgründe

1. Die Prüfungsabteilung hat im Wesentlichen festgestellt, dass die Merkmale des geltenden Anspruchs 1 zur Erfindung des ursprünglichen Anspruchs 16 gehören und damit zu der weiteren, nicht recherchierten Erfindung (Punkt 32 der Entscheidung).

T 2300/16 - Rule 137(5) case

Key points

• The Examining Division had refused the application on the ground that the amended claims did not comply with Rule 137(5) EPC. The Board does not agree.
• " According to [Rule 137(5) EPC], amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept." The Board focuses on the "single general inventive concept" part of Rule 137(5) EPC.
• The Board: "It follows from the above that the [added] "road selection feature" combines with the [...] "forecasting feature" [of the original claims] to form a single general inventive concept. In fact, rather than introducing a different general inventive concept, the amendment made aims at restricting the invention to a particular aspect of said general inventive concept, namely using the reliable forecasting for selecting a road to be followed which allows making a more efficient use of the automotive vehicle (e.g. by allowing an optimized fuel consumption) during a journey." 
• "In view of the above and since the Examining Division has not given other grounds for the refusal apart from the non compliance with Rule 137(5) EPC, the contested decision must be set aside." 
• The Board's decision seems entirely correct to me. 

EPO T 2300/16 -  link

Reasons for the Decision

1. Rule 137 was amended by decision of the Administrative Council of 25 March 2009 and the amended Rule applies to European patent applications for which the European search report or the supplementary European search report was drawn up on or after 1 April 2010 (see OJ EPO 2009, 299, in particular Article 1, point 7, and Article 2(2) of the decision). In the present case the International Search Report (which takes the place of the European search report, see Article 153(6) EPC) was drawn up on 24 February 2010, and therefore the amended Rule does not apply. It is thus the text of Rule 137 EPC in force before the above-mentioned decision of the Administrative Council that applies. Paragraph (4) of this Rule contains the same provisions of amended Rule 137(5) EPC, and therefore the correct legal basis for the Examining Division's refusal is Rule 137(4) EPC in force before the decision of the Administrative Council.

2. According to Rule 137(4) EPC, amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept.

3. The Examining Division's objection is exclusively concerned with the feature added to the characterizing portion of claim 1, according to which a road to be followed is selected by onboard computation means based on the forecasting of the magnitude of the data associated to a given journey. According to the Examining Division, the originally claimed invention was concerned with providing reliable forecasting, whilst the added feature is concerned with selecting a road to be followed (see point 2.5 of the contested decision).

4. The Board does not agree with the Examining Division's conclusions for the following reasons.

It is clear from the wording of the claim that the added feature concerning the selection of a road to be followed is not to be taken in isolation from the forecasting of the magnitude of the data associated to a given journey, since the selection of the road is based thereupon. Therefore, the "road selection feature" combines with the "forecasting feature". The question is whether they combine to form a single general inventive concept.

Turning to the disclosure of the application as filed, it is apparent that the originally claimed invention relates to a method for forecasting the evolution of the magnitude of a data associated to a journey of an automotive vehicle via a mathematical model. The method of originally filed claim 1 foresees, inter alia, running the vehicle on a reference trip (feature b of claim 1) and adjusting a mathematical function based on measurements made during the reference trip (feature e of claim 1). Accordingly, the Examining Division is correct in stating that the originally claimed invention is concerned with "reliable forecasting", since the "adjusting" feature results in a reliable, or rather a more accurate, forecasting, see also page 2, lines 23 to 26 of the description of the application as filed.

The further question that arises is what is the purpose of said reliable forecasting. In accordance with the disclosure of the application as filed, the reliable forecasting serves to "efficiently use computerized systems in order to select the best running conditions for a vehicle" (page 2, lines 3 to 5). The "best running conditions" are, in particular, those that allow optimizing fuel consumption by forecasting the fuel consumption (see page 2, lines 26 to 28; see the examples 1 to 3): an accurate forecasting of the fuel consumption enables the onboard computation means to efficiently select a road to be followed and/or a gear to be used during a given journey (see page 2, lines 26 to 28).

Although in accordance with the disclosure of the application as filed the "forecasting feature" and the "best running conditions" are not exclusively related to fuel consumption (see page 9, lines 13 to 17: forecasting of engine load or pollutant emissions being other possibilities), and fuel consumption is not exclusively related to the selection of a road to be followed (see page 2, line 28 and page 9, lines 18 to 20: a gear to be used or a driving strategy can instead be selected for a given journey), it is apparent that the general inventive concept is to use the reliable forecasting in order to make a more efficient use of the automotive vehicle during a journey.

It follows from the above that the "road selection feature" combines with the "forecasting feature" to form a single general inventive concept.

In fact, rather than introducing a different general inventive concept, the amendment made aims at restricting the invention to a particular aspect of said general inventive concept, namely using the reliable forecasting for selecting a road to be followed which allows making a more efficient use of the automotive vehicle (e.g. by allowing an optimized fuel consumption) during a journey.

5. In view of the above and since the Examining Division has not given other grounds for the refusal apart from the non compliance with Rule 137(5) EPC, the contested decision must be set aside.

6. Since, however, novelty and inventive step (in particular) were not addressed in the decision under appeal, the board exercises its discretion under Article 111 (1) EPC to remit the case to the Examining Division for further prosecution.| |

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.

T 2073/15 - Not unsearched

Key points

• In this examination appeal, a partial ISR had been established and no additional search fees had been paid so that the ISR covered only the first invention which included claims 1-4. The claims were then amended by a feature taken from the decision. The ED considered this claim request to be unallowable under Rule 137(5) EPC. 
• "The board agrees with the appellant that the feature [at issue] was included in the search." (underlining added)
• The feature at issue is " the application of the precoding weights to the beams in conjunction with beam-forming ". [Not my field of technology but it is about wireless communication.]
• The Board: "originally filed claim 3, which was included in the search [i.e. claim 3 was expressly covered by the ISR], comprised a list of transmission modes, including SDMA precoding. With respect to SDMA precoding, which was thus included in the scope of the search related to the first invention, the description in paragraph [0067] teaches how sectors, virtual sectors, and beams within a virtual sector, are formed in this transmission mode. This description of SDMA precoding, a feature included in the scope of the search, corresponds fairly well to the description of paragraphs [0049] and [0050] in combination with Figure 4 related to precoding weights applied in conjunction with beam-forming to the beams. The board therefore holds that the claims meet the requirements of Rule 137(5) EPC."
• As a comment, in my view it is rather strange for the Board to decide what is included in the search (rather than what ought to be included in the search). If the ISA did not search the features of para. [0049] of the description, then I don't see how the Board can decide that the ISA did. The Board can decide that the ISA should have searched the feature in the description, and accordingly admit the amended claim and remit the case (such that the ED has to carry out an additional search, free of fee, for the feature). As I've discussed in my article in epi Information 2018/2, for a claim to be unallowable under Rule 137(5) it must be both (i) unsearched (which on a factual level was the case here) and (ii) lack unity of invention with the claims pending at the time of the search. If the feature at issue is a simple implementation of searched claim 3, the feature should not lack unity of invention with that claim 3 and the amendment at issue is allowable because the second requirement of Rule 137(5) EPC is not met. There is however indeed case law which interprets  "unsearched" in Rule 137(5) as "did not need to be searched" and then asks if the feature should have been searched - raising the question when the Examiner should or should not search features only mentioned in the description.

EPO T 2073/15 -  link

2.2 Rule 137(5) EPC

The board agrees with the appellant that the feature defining the application of the precoding weights to the beams in conjunction with beam-forming was included in the search.

In that respect, the board notes firstly that, in the search report issued by the EPO as International Searching Authority [IPRP Chapter I here; no additional search fees were paid; the searched claims included claims 1-4], the invention which was first defined in the originally filed claims, and which was the subject of the search, was defined as being related to "the set of different transmission modes contained in the codebook, of which one can be selected". This indicates the relevance of the transmission modes for the search.

T 1473/13 (I) - Unsearched claims

Key points

• This is the first post about this examination appeal, dealing with Rule 137(5). The second post will be about the request for stay and German constitutional proceedings.
• The Board applies Rule 137(5) EPC in my view entirely correctly.
• The Board, notes in connection with Rule 137(5): According to established case law [...], features added from the description to further define an element already a feature of the original main claim do not "affect the notion of unity of invention". Amended claims can only be refused if the subject-matter of the claims filed originally and that of the amended claims was such that, had all the claims originally been filed together, a further search fee would have been payable." 
• " The supplementary European search report was based on the claims as published. In the European search opinion, point 2.1, the search division objected that the claims did not meet the requirements of Article 82 EPC because the claims related to two separate inventions" 
• " The board agrees with the appellant that the features added from the description further specify rather than replace the originally claimed in-band signalling of the deterministic mapping and that these features do not affect the notion of unity of invention" 
•  the board is not convinced that if the claims underlying the appealed decision "had been present in claims at the search stage of the application it would have resulted in requesting an additional search fee" []. The claims of the main and first and second auxiliary requests relate to in-band signalling of deterministic mapping. Thus, they would have been included in the first group of claims identified in point 2.1.1 of the European search opinion. No further search fee was requested for claims within the first group. In view of the above, the examining division was incorrect in refusing the application for not meeting the requirements of Rule 137(5) EPC." 

EPO T 1473/13 - link

Summary of Facts and Submissions

I. The appeal is against the decision of the examining division dated 19 February 2013 refusing European patent application No. 06751124.6 pursuant to Article 97(2) EPC. The application was published as international application WO 2006/113929 A2.

II. The documents cited in the decision under appeal included the following: [...]

III. The decision under appeal was based on the grounds that the independent claims of the main and the two auxiliary requests did not meet the requirements of Rule 137(5) EPC. In the section "Further Remarks" of the decision under appeal, the examining division noted that the independent claims of the main request did not meet the requirements of Articles 83, 84 and 56 EPC and that the independent claims of the auxiliary requests did not meet the requirements of Articles 84 and 56 EPC.

[...]

Reasons for the Decision

1. The appeal is admissible.

2. Main, first and second auxiliary requests - Rule 137(5) EPC

2.1 Rule 137(5) EPC provides that amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept.

According to established case law (see Case Law of the Boards of Appeal of the EPO, 8th edition 2016 ("Case Law"), section IV.B.5.4), features added from the description to further define an element already a feature of the original main claim do not "affect the notion of unity of invention". Amended claims can only be refused if the subject-matter of the claims filed originally and that of the amended claims was such that, had all the claims originally been filed together, a further search fee would have been payable.

2.2 The originally filed claims included independent method claims 1, 3, 5 and 7, all relating to signalling a deterministic mapping with the mapping inserted in a reserved field of a vestigial sideband data frame (claim 1), transmitted through spread spectrum (claim 3), transmitted through a signalling channel (claim 5), or transmitted from a second provider (claim 7).

The supplementary European search report was based on the claims as published.

In the European search opinion, point 2.1, the search division objected that the claims did not meet the requirements of Article 82 EPC because the claims related to two separate inventions:

(a) in-band signalling of deterministic mapping using a single transmission channel for both, (ATSC) VSB frames and mapping information describing the frame structure, while retaining full (VSB frame) synchronisation between both (method claims 1 to 4);

and

(b) out-of-band signalling of deterministic mapping in which the actual service content is transmitted from one service provider (e.g. ATSC broadcaster), while mapping information to access data in the content from the first service provider is transmitted independently in a separate signalling channel from a second content provider (method claims 5 to 8).

2.3 Claim 1 of the main, first and second auxiliary request specifies "transmitting an information signaling a deterministic mapping in each VSB data frame of an ATSC data stream".

2.4 The board agrees with the appellant that the features added from the description further specify rather than replace the originally claimed in-band signalling of the deterministic mapping and that these features do not affect the notion of unity of invention (see point XIV(a) above).

2.5 Even though the added features had not been "hinted at in the original set of claims" and addressed "the different, unrelated problem of increasing resilience to long burst errors [...] by deeper than legacy ATSC interleaving", the board is not convinced that if the claims underlying the appealed decision "had been present in claims at the search stage of the application it would have resulted in requesting an additional search fee" (see point XIII(a) above). The claims of the main and first and second auxiliary requests relate to in-band signalling of deterministic mapping. Thus, they would have been included in the first group of claims identified in point 2.1.1 of the European search opinion. No further search fee was requested for claims within the first group.

2.6 In view of the above, the examining division was incorrect in refusing the application for not meeting the requirements of Rule 137(5) EPC.

T 2249/16 - Broad but enabled

Key points

• In this examination appeal, the ED found that claim 1 is directed to an "extremely large number of possible compositions". Moreover, the claims were broad compared to the examples. The application was therefore refused under Article 83 EPC.
• The Board: " Dies alleine begründet keine mangelnde Offenbarung." . The Board notes that the description teaches a general concept for preparing the compositions, discusses it in detail and also gives examples.
•  "Die angefochtene Entscheidung führt keinerlei Gründe oder Argumente an, warum ein Fachmann nicht in der Lage sein sollte, das in Anspruch 11 definierte Verfahren auszuführen und demgemäß die in Anspruch 1 definierten Kompositleuchtstoffe zu erhalten." 
• The Board finds Article 83 to be complied with. 
•  The ED had also refused the application for lack of support under Article 84 because a number of the examples would actually be outside the pending claims.
• "  Nach Ansicht der Kammer ist diese Frage jedoch für die ausreichenden Stütze der Ansprüche durch die Beschreibung unter Artikel 84 EPÜ zweitrangig." 
• The ED had also argued that the description "  seien keine ausreichende Stütze für die Ansprüche. Die Ansprüche seien zu breit und beträfen eine Vielzahl möglicher Verbindungen und Verfahren." To me this seems to be a typical "the claims are too  broad" objection. 
• The Board fins this reasoning to be insufficient. " Die Kammer hält diese Begründung nicht für stichhaltig. Die beanspruchten Verfahren und Leuchtstoffe sind als solche in der Beschreibung wörtlich wiedergegeben. Das Herstellungsverfahren für die beanspruchten Kompositleuchtstoffe ist auf Seiten 14-19 in technisch nachvollziehbarer Weise beschrieben. Es wurden von der Prüfungsabteilung keine Gründe angeführt, aus denen hervorginge, dass die Beschreibung technisch unvollständig oder unglaubwürdig wäre. " 
• The ED had also repeatedly referred to Rule 137(5) EPC to challenge claims that were not limited to searched subject-matter. The Board points out (in r.6) that because unity of invention was never objected to, Rule 137(5) first sentence does not apply. The second sentence does not apply because no Communication under Rule 62a or 63 was issued during the search and because the search report had already been drawn up before 1 April 2010. 

EPO T 2249/16 - link

II. Der unabhängige Anspruch 1 des Hauptantrags, auf dem die Entscheidung beruht, lautet wie folgt:

Kompositleuchtstoff, umfassend eine anorganische Matrix und einen organischen Fluoreszenzfarbstoff,
wobei die anorganische Matrix aus einer Verbindung, ausgewählt aus der Gruppe, bestehend aus MgCO3, CaCO3, SrCO3, BaCO3, MgSO4, CaSO4, SrSO4, BaSO4, Mg3(PO4)2, Ca3(PO4)2, Sr3(PO4)2, Ba3(PO4)2, Mg3(PO4)2, LaPO4, ScPO4, GaPO4, InPO4, ZrO(HPO4), ZrO(H2PO4)2, Zr3(PO4)4, einschließlich Zr(HPO4)2 bzw. Zr(H2PO4)4, und Kombinationen davon, aufgebaut ist,
wobei der organische Fluoreszenzfarbstoff eine oder mehrere funktionelle Gruppen, ausgewählt aus Sulfatgruppen, Phosphatgruppen, Phosphonsäuregruppen, Phosphansäuregruppen oder Carboxylatgruppen, aufweist, über welche der Fluoreszenzfarbstoff mittels ionischer Bindung in die anorganische Matrix eingebaut ist,

T 2029/13 - Unity of invention and old Rule 164

Key points

• In this examination appeal, the claim requests were not admitted by the ED under Rule 137(5) EPC because "their differentiating subject-matter with respect to the main request related to unsearched subject-matter associated with the second invention identified during the supplementary European search".
• When drawing up the supplementary European search report, the EPO found the claims to lack unity of invention and to relate to three different inventions. The SESR was drawn up for the first-mentioned invention. No invitation to pay additional search fees was issued. 
• "In accordance with Rule 164(1) EPC (in the version which entered into force on 1 April 2010; see Decision of the Administrative Council of 27 October 2009 amending the Implementing Regulations to the European Patent Convention, OJ EPO 2009, 582 (CA/D 20/09)), the SESR was drawn up  those parts of the application which related to the invention, or the groups of inventions within the meaning of Article 82 EPC, first mentioned in the claims, i.e. in the present case only claims 1 to 6".  This was a particularly harsh version of Rule 164 EPC (see e.g. T 1981/12 where "the Board can accept that the position in which the appellant finds itself was apparently not taken into account when R 164 was implemented and that it operates in a way which was probably not foreseen and may be thought to be unfair"; see also E.A. Kennington in epi Information 1/2009. Whether or not using Rule 137(5) EPC as the legal basis for the refusal, rather than G 2/92 (see here) was appropriate is an interesting question though obsolete since it concerns a now abolished version of Rule 164 EPC. 
• However, the board is of the view that claims 1 to 13 do not lack unity of invention (Article 82 and Rule 44 EPC). [...] claims 7 to 13 contain all the features of claim 1 and, hence, also the STF identified with respect to that claim 1, i.e. the horizon adjustment control.
• "Consequently, the search division should also have searched claims 7 to 13 of the SESR, including the features in those claims relating to the mounting mechanism, and the examining division should not have raised an objection under Rule 137(5) EPC against the second and third auxiliary requests underlying the decision under appeal on the grounds that claim 1 of those requests comprised unsearched features relating to the mounting mechanism."
• The Board remits the case. 

EPO T 2029/13 - link

Reasons for the Decision

1. The appeal is admissible.

Main and first auxiliary requests

2. The claims of the main and first auxiliary requests are respectively based on the claims of the second and third auxiliary requests underlying the decision under appeal, from which they differ only by the following amendments in claim 1 (additions are underlined, deletions are [deleted: struck-through]):

"... and the lens (26) and the image sensor (18) having an orientation that is adjustable with respect to the housing plane (20);

... to rotate the lens (26) and the image sensor (18) which [deleted: is ]are supported in rotational congruence with..."

3. The examining division did not admit the claims of the second and third auxiliary requests underlying the decision under appeal into the proceedings under Rule 137(5) EPC because "their differentiating subject-matter with respect to the main request related to unsearched subject-matter associated with the second invention identified during the supplementary European search" (see point 1.8 of the "Summary of facts and submissions" and the minutes of the oral proceedings).

4. Since the appellant's present main request and first auxiliary request are based on the second and third auxiliary requests underlying the decision under appeal, the board must review whether the examining division's decision not to admit the second and third auxiliary requests underlying the decision under appeal into the proceedings under Rule 137(5) EPC was correct.

5. In the present case, the version of Rule 137(5) EPC that entered into force on 1 April 2010 applies to the present application, because the supplementary European search report (hereinafter "SESR") under Article 153(7) EPC was drawn up on 22 December 2010, i.e. after 1 April 2010 (see Article 1(7) and Article 2(2) of the Decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 3/09), OJ EPO 2009, 299).

T 1542/14 - Rule 137(5) not in opposition

Key points

• In this opposition appeal, the Board confirms that Rule 137(5) does not apply to amendments in opposition (following T443/97).

EPO T 1542/14 - link

5. Regel 137(5) EPÜ

Der Einwand der Beschwerdeführerin, dass die Änderungen des Anspruchs 1 während des Einspruchsverfahrens die Vorschriften der Regel 137(5) EPÜ verletzten, trifft nicht zu, da, wie von der Beschwerdegegnerin argumentiert, Regel 137(5) EPÜ nur auf Änderungen, die während des Prüfungsverfahrens vorgenommen wurden, abstellt, siehe Rechtssprechung der Beschwerdekammern, 8. Auflage 2016, IV.B.5.1-5.2.

T 0820/15 - Rule 137(5) and dependent claims

Key points

• The Examining Division had refused the application under Rule 137(5) EPC. 
• The Board: " To determine the compliance with Rule [137(5) EPC], it has to be first ascertained whether or not the amended claims relate to unsearched subject-matter and only in the event that the subject-matter is considered to be unsearched must it be further checked whether this subject-matter combines with the originally claimed invention to form a single general inventive concept, i.e. whether the respective subject-matters may be considered to be unitary".
  As a comment, in my view the applicant can free choose for which one of the two cumulative requirements of Rule 137(5) he wants to show that it doesn't apply in the case at hand, hence in my view, there is no prescribed order. (see my article in epi Information 2018/2).  
• The Board: "In the present case, claim 1 of the main request differs from claim 1 as originally filed in that it now includes added features G) and H) and further specifies that the audio-visual information is broadcast to multiple receivers.  It is apparent to the board that the entire application relates to TV broadcast systems, i.e. inherently [...] in accordance with feature H) and that using dynamic amounts of training information within the meaning of feature G) had been appropriately reflected in dependent claims 3, 11, 19 and 27 as originally filed. It also appears from the file that those dependent claims were in fact searched according to the respective International Search Report dated 4 November 2009. The board, therefore, concludes that the above added features cannot objectively be considered to be unsearched within the meaning of [Rule 137(5) EPC]."
• As a comment, Rule 137(5) EPC refers to "subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept". As held in T708/00, hn.1, unity of invention with one of the original claims is sufficient; hence, in this case, the Board could also have noted that feature G has unity of invention with e.g. original calm 3 specifying the same feature. As explained in T708/00, hn. 1, the question is, if the claim at issue had been added to the original set of claims, had a further search fee been payable.
• Rule 137(5) is for features taken from the description; lack of unity between the original claims needs to be addressed under G2/92 which is a separate and distinct ground for not admitting claims (see my article and OJ 1995, p.420 which contains the EPO's explanation of the then-new rule). 
• This decision takes a different course than I did in my article; of course, very well the Board can be right or perhaps there is no substantive difference.
• I am always open to any insights about Rule 137(5) EPC, comments are welcome.

EPO T 0820/15 - link

3.1 Allowability of claim amendments (Rule 137(5) EPC)

3.1.1 The examining division found that present claim 1 did not comply with the requirements of Rule 137(5) EPC because its subject-matter as amended related to unsearched subject-matter and did not combine with the originally claimed invention to form a single general inventive concept (see Reasons 1 to 3). This was essentially because the originally filed independent claims did not comprise any feature pointing towards adapting the amount of training information within the meaning of feature G) of claim 1 (see appealed decision, Reasons 3.2.2).

3.1.2 As to the application of Rule 137(5) EPC, the board first points out that, in the present case, Rule 137(4) EPC - as in force from 13 December 2007 until 31 March 2010 - applies, since the respective International Search Report had been completed on 22 October 2009, i.e. before 1 April 2010 (cf. Decision of the Administrative Council of 25 March 2009, OJ EPO 2009, 299, Article 2).

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.