T 2703/18 - Search fee refund

Key points

• This is an appeal against a decision of an Examining Division refusing the application and refusing the refund of an additionally paid search fee under Rule 64.
• "The examining division refused the application on the basis that the main request and auxiliary requests 1 and 2 did not meet the requirement of an inventive step, Article 56 EPC, and because auxiliary request 3 was not admitted under Rule 137(3) EPC. It rejected the request to refund a further search fee because it confirmed the search division's non-unity objection against the original set of claims."
• An amended set of claims was filed in appeal after the Board cited new prior art of own motion and in reply to clarity objections of the Board. The Board considers those claims to be allowable. 
• The invention is interesting but too advanced software technology for me. 
• D1 was the master thesis of one of the inventors on the same topic.
• "The first two authors of D8 are the inventors of the present application. D8 is reference [137] in the later-published PhD thesis of the second author, to which the appellant drew the attention of the board in the grounds of appeal (page 26, fifth complete paragraph)."
• "The board noted that it was not convinced by the examining division's inventive step lines of argument starting from either D1 or D2. However, claim 1 of the main request and auxiliary requests 1 and 2 did not appear to involve an inventive step starting from D2 combined with common general knowledge as illustrated by D8."
• Turning to the requested refund of the additionally paid search fee: "As the appellant's refund request concerned only the further search fee paid for original claims 10 and 11, the examining division had to assess whether the communication under Rule 64(1) EPC was "justified" - within the meaning of Rule 64(2) EPC - to the extent that it required a further search fee to be paid for original claims 10 and 11."
• "In a number of board of appeal decisions, it has been considered that the scope of the review under Rule 64(2) EPC (previously Rule 46(1) EPC 1973) to be carried out by the examining division is limited to the consideration of certain facts and/or arguments."
• " it was considered in T 188/00 that "a review of the finding of lack of unity of invention has to be carried out having regard only to the facts presented by the search division in its communication under Rule 46(1) EPC [1973]" and that "the examining division has to base its review solely on the documents cited in the partial search report and on the specification of the different inventions drawn up by the search division, while taking into account argu­ments which the applicant may have submitted in support of his request for a refund"
• "The limitation to the facts presented by the search division, in particular the cited documents, postulated in T 188/00, has been followed, for instance, in T 1476/09, reasons 3, T 2285/17, reasons 4.2, and T 2873/19, reasons 9.1. In T 188/00 and in T 1476/09, the board found that the examining division's reasoning why the communication under Rule 64(1) EPC had been justified was incorrect because it relied on prior art that had not been cited in the partial search report (see T 188/00, reasons 4.6, and T 1476/09, reasons 3)."
• "The present board agrees with T 188/00 to the extent that the examining division may only find that the communication pursuant to Rule 64(1) EPC was justified within the meaning of Rule 64(2) EPC on the basis of the facts regarding the prior art presented by the search division with that communication, in particular the documents cited in the partial search report including sheet B.

  On the other hand, the present board considers that a finding that the communication was not justified may well be based on further facts (for instance in the circumstances of the case in T 755/14)."

• "the present board considers that, in the context of Rule 64(2) EPC, the examining division may, in order to find the communication under Rule 64(1) EPC to have been justified, complete a reasoning outlined by the search division with the communication but may not replace it by an entirely different reasoning, even if based on the same prior art."

• "This position takes account of the fact that the applicant has to decide whether or not to pay further search fees only on the basis of the information provided with the communication under Rule 64(1) EPC. Where the search division decides to provide arguments with the communication as to why a further search fee would have to be paid, this is to enable the applicant to understand at this stage why the invitation is justified. The applicant would inevitably rely on these arguments to assess whether it is actually entitled to a complete search for a single search fee and, if so, would pay the further search fee with the expectation that it will be refunded upon review. In the board's view, it would be undesirable as a matter of fairness that such a refund may later be refused by the examining division because the communication is considered to have been "justified" based on an entirely different reasoning than that contained in the communication."

• "When assessing whether the application documents on file comply with the requirement of Article 82 EPC, as a requirement for the grant of a patent, the examining division is not bound by the search division's opinion on unity of invention "

• "for the reasons given at points 16.3 and 18.1 above, the board is not convinced by the reasons given by the examining division on why claim 1 of the then main request lacked an inventive step over D1 or D2 combined with D7. It follows that the board is also not convinced by the reasons given by the examining division in the context of Rule 64(2) EPC (and a fortiori by the search division) on why original claim 1 lacked an inventive step."

• "The additional search fee was paid for claim 10. ": The reasoning of the examining division, like that of the search division, ignores at this stage the depen­den­cies of these claims [i.e. claim 10] (apart from their dependency on claim 1) and appears to have only considered the additional features defined in each of the claims."

• "Original claim 10 was directed to a "method according to one of the preceding claims 3 to 9" and original claim 11 to a "method according to one of the preceding claims 3 to 10". Hence, at least the subject-matter of original claim 3 (itself being dependent on original claim 1) was common to the first and the second "search subjects".  They may only be non-unitary if original claim 3 was not inventive, but this has neither been alleged nor established by the examining division in its reasoning on Rule 64(2) EPC.

• " The board therefore concludes that the communication pursuant to Rule 64(1) EPC was not justified and the further search fee paid for original claims 10 and 11 is thus to be refunded, Rule 64(2) EPC."

• The decision also contains interesting remarks on Art.82. 

EPO 

You can find the link to the decision and an extract of it after the jump.

T 0806/18 - The Search Division should not adopt a purely algorithmic approach

 Key points

• This appeal concerns the refund of the search fee (in addition to clarity). The Board in the headnote: “In determining whether or not to request further search fees from an applicant, the Search Division should not adopt a purely algorithmic approach, but should consider whether it would be reasonable, under the circumstances of the case and in the light of the subject-matter already searched and the prior art found, to demand additional fees for extending the search to the remaining claims”
  
• First to the main issue of clarity: “Claim 1 of the present main request differs considerably from the version which was rejected by the Examining Division on the grounds that it failed to meet the requirements of Article 84 EPC. The Board sees no reason to object to the present version under Article 84 EPC.” Admissibility of the amended request is not discussed.
• As to the search fee: “he Examining Division reviewed the non-unity finding pursuant to Rule 64(2) EPC to determine whether the request for a further search fee was justified, and in the contested decision the request for reimbursement was rejected ”
• The Search Division found non-unity a posteriori, i.e. following the finding that claim 1 lacked novelty over D1. Where an independent claim is found to lack novelty, it is often the case that a formal objection of lack of unity of invention could be envisaged between two or more groups of dependent claims. However, the Search Division (or the Examining Division reviewing a non-unity finding pursuant to Rule 64(2) EPC) should bear in mind that unity of invention under Article 82 EPC is "merely an administrative regulation" (G 1/91, Reasons, point 4.1)”
• The Boards instruct that the Search and Examining Divisions should give due consideration to the following advice from the Guidelines: "Lack of unity is not a ground of revocation in later proceedings. Therefore, although the objection is certainly made and amendment insisted upon in clear cases, it is neither raised nor insisted upon on the basis of a narrow, literal or academic approach. This is particularly so where the possible lack of unity does not necessitate a further search."
• However, in the present case, claim 3 was part of the first invention and the claim 6 at issue “relates to essentially the same subject-matter as claim 3, with claim 3 going into more detail” (however, there is an issue with claim dependencies)
• “ it is clear from the search opinion that the Search Division considered the additional features of claim 3 to be incapable of contributing to inventive step on the basis of documents already present in the partial search report”
• “In the light of this, the Board does not see why a further search,  requiring the payment of an additional search fee, could logically be deemed necessary for the subject-matter of claim 6.”

T 0806/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180806eu1.html

5. Request for a Refund of the Additional Search Fee

5.1 As a result of a finding of lack of unity of invention (Article 82 EPC), a partial European Search Report pursuant to Rule 64(1) EPC was drawn up. An attached communication (supplemental sheet B) explained that the common concept linking the dependent claims was considered to be the subject-matter of claim 1, which was not new in the light of D1. The subject-matter of claims 2 and 6 did not fulfill the requirement of unity of invention (Article 82 and Rule 44 EPC), and hence two inventions which were not so linked as to form a single general inventive concept could be identified based on the following groupings of claims:

Invention 1: claims 1-5, 7-11

Invention 2: claims 6, 12.

The partial European search report included the following statement: "The present partial European search report has been drawn up for those parts of the European patent application which relate to the invention first mentioned in the claims"; hence, the subject-matter of claims 1-5 and 7-11 was searched. Three documents (D1-D3) were cited as follows: D1 as "X" for claims 1 and 7; D1 and D2 as "Y" for claims 2-5 and 8-11; D3 as "Y" for claims 3, 4, 9 and 10.

T 2285/17 - Review additional search fees

 Key points

• This is an appeal against a decision to refuse the application and to reject the refund of the paid seven additional search fees.
• The Board: “The review under Rule 64(2) EPC has to be carried out by the examining division having regard only to the facts presented by the search division in its communication under Rule 64(1) EPC, i. e. the partial European search report including "sheet B" in the present case. Hence, the examining division has to base its review solely on the documents cited in the partial search report and on the specification of the different inventions drawn up by the search division, while taking into account any arguments which the applicant might have submitted in support of his request for a refund”
• “ From the above, the contentious question with respect to the non-unity objection raised by the search division and upheld by the examining division is whether the subject-matter of claims 1 and 6 as originally filed is novel over D1 or not. If D1 discloses the subject-matter of original claims 1 and 6, then raising an objection under Article 82 EPC by the search division and requesting the payment of seven additional fees were justified; if the subject-matter of original claims 1 and 6 is novel over D1, then the search division's objection was not justified and the seven additional search fees are to be reimbursed.”
• “The subject-matter of original claim 1 is therefore novel over D1. ”
• “Hence, the seven additional search fees are to be reimbursed.”
• The applicant reverses to basically the original claims as main request after receiving the Bord's preliminary opinion acknowledging novelty over D1. This request is admited.
• “As the claims according to the present main request correspond to those of the former main request and, hence, to the set of claims as originally filed, with amendments made only to overcome the Board's objections under Article 84 EPC raised for the first time in its communication pursuant to Article 15(1) RPBA 2020, the Board is convinced that the above circumstances - which arose from reversing the finding on unity of invention-qualify as exceptional circumstances in the sense of Article 13(2) RPBA 2020 and, accordingly, admits the main request into the appeal proceedings.”

T 2285/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t172285eu1.html

Reasons for the Decision

1. The appeal is admissible

[..]

4. Request to refund the seven additional search fees

4.1 Claim 1 as originally filed has the following wording (feature labeling added by the Board):

[...]

4.2 The review under Rule 64(2) EPC has to be carried out by the examining division having regard only to the facts presented by the search division in its communication under Rule 64(1) EPC, i. e. the partial European search report including "sheet B" in the present case. Hence, the examining division has to base its review solely on the documents cited in the partial search report and on the specification of the different inventions drawn up by the search division, while taking into account any arguments which the applicant might have submitted in support of his request for a refund, see Case Law of the Boards of Appeal of the EPO, 9th Edition, 2019, II.B.3.3, fifth paragraph.

In the present case, the partial European search report was drawn up for those parts of the patent application which related to the invention first mentioned in the claims and sheet B identified in total eight inventions :

T 2441/18 - Search fee refund appeal

 Key points

• The applicant filed an appeal against the interlocutory decision of the Examining Division to not refund three paid additional search fees. The decision was made separately appealable by the Examining Divisional. The application was a Euro-direct application, not a Euro-PCT application.
• The Board finds that claim 1 is novel over D1 and the other claims are novel over D1 as well because of the same feature that is not taught in D1.
• The claims therefore have unity of invention: “Somit kann die einzige allgemeine erfinderische Idee, die der Anmeldung zugrunde liegt, nicht als durch den zitierten Stand der Technik vorweggenommen angesehen werden und die Einheitlichkeit (Artikel 82 EPÜ) des beanspruchten Gegenstands liegt vor.”
• The Examining Division has taken no action during the course of the appeal (three years), in line with GL E-X,3 noting that: “The [first instance] proceedings must be suspended until the decision has become final”
• There is no refund of the appeal fee.

T 2441/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182441du1.html

Sachverhalt und Anträge

I. Die Beschwerde der Patentanmelderin (Beschwerdeführerin) richtet sich gegen die Zwischenentscheidung der Prüfungsabteilung, dem Antrag nach Regel 64(2) EPÜ, drei zusätzlich entrichtete Recherchegebühren nach einem Einwand nach Art. 82 EPÜ zurückzuerstatten, nicht stattzugeben.

II. Die Patentanmeldung ist auf ein Galvanisierverfahren gerichtet.

Anspruch 1 lautet:

"Verfahren zum Herstellen eines gehärteten Formteils mit den Schritten: [...]

IV. Die Rechercheabteilung erhob einen Einwand wegen mangelnder Einheitlichkeit der Anmeldung (Artikel 82 EPÜ) und lud die Anmelderin ein, 5 weitere Recherchegebühren zu bezahlen.

Sie argumentierte, der Oberbegriff des Anspruchs 1 sei in der D1, Abs. [0029]-[0031] offenbart und der kennzeichnende Teil ginge implizit aus Abs. [0032] hervor. Damit wäre der Gegenstand des Anspruchs 1 nicht neu. Die abhängigen Ansprüche würden 6 Gruppen bilden, die 6 potentielle Erfindungen repräsentierten. Die Vorrichtungsansprüche wurden analog zu den Verfahrensansprüchen aufgeteilt und den entsprechenden Gruppen zugeordnet.

V. Die Beschwerdeführerin bezahlte daraufhin unter Protest drei zusätzliche Recherchegebühren.

VI. Nach einem Antrag nach Regel 64(2) EPÜ, drei Recherchegebühren zu erstatten, bestätigte die Prüfungsabteilung die Auffassung der Rechercheabteilung und erließ die angefochtene Zwischenentscheidung.

T 2076/15 - Request refund search fee in appeal

Key points

• In this examination appeal, the Boards finds the claims allowable. The Board then has to decide on the request for a refund of the paid additional search fee. The Board concludes that it is not competent to decide on the request, because it was made for the first time with the Statement of grounds in appeal. This follows from Rule 64(2) EPC, which refers to the Examining Division, according to the Board. 

EPO Headnote
Stellt der Beschwerdeführer im Prüfungsbeschwerdeverfahren erstmalig vor der Beschwerdekammer einen Antrag gemäß Regel 64 (2) EPÜ auf Rückzahlung einer gemäß Regel 64 (1) EPÜ zusätzlich entrichteten Recherchengebühr, so ist die Beschwerdekammer hierfür unzuständig und der Antrag daher unzulässig


EPO T 2076/15 - link

4.3 Der Gegenstand der unabhängigen Ansprüche 1 und 6 und der abhängigen Ansprüche 2 bis 5 und 7 beruht daher auf einer erfinderischen Tätigkeit (Artikel 56 EPÜ).

5. Nach Auffassung der Kammer genügen die Anmeldungsunterlagen gemäß dem vorliegenden Antrag der Beschwerdeführerin und die Erfindung, die sie zum Gegenstand haben, auch den übrigen Erfordernissen des EPÜ im Sinne von Artikel 97 (1) EPÜ. Somit kann die Erteilung eines Patents in dieser Fassung erfolgen (Artikel 111 (1) EPÜ).

6. Antrag auf Rückzahlung einer Recherchengebühr

6.1 Während der Recherche wurde durch die Beschwerdeführerin eine weitere Recherchengebühr entrichtet, nachdem die mit der Anmeldung eingereichten Ansprüche von der Recherchenabteilung als nicht einheitlich angesehen wurden (Regel 64 (1) EPÜ). Mit der Beschwerdebegründung hat die Beschwerdeführerin die Rückzahlung der zusätzlich bezahlten Recherchengebühr beantragt (Regel 64 (2) EPÜ).