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 1414/18 - The application will be refused

Key points

• This is an examination appeal.
• The Board: “A statement such as "the next procedural step will be summons to oral proceedings during which the application will be refused" made prior to a final decision to refuse a patent application may infringe a party's right to be heard and thus may lead to a substantial procedural violation” (and in this case, such statement indeed was a substantial procedural violation).
• The application was refused for lack of unity of invention.
• "In order to properly assess the compliance with Article 82 EPC, the underlying "invention(s)" is (are) to be established on the basis of the technical problem(s) to be solved according to the description of the application in question (see e.g. W 11/89, [] point 4.1; W 6/97, point 6.3; T 173/06, point 8; T 1888/09, point 2.1). This is apparently also endorsed by the Guidelines for Examination in its applicable edition of November 2017 (see e.g. F-V, section 8, second paragraph, and section 8.1, penultimate sentence). 
• The Guidelines 2017, cited paragraph: "In particular, the reasons must highlight the technical problem(s) addressed by the different (groups of) inventions" [F-V, 4.3 in the 2019 version]
• The phrase "the Guidelines for Examination in its applicable edition of November 2017" appears a bit particular.
  First of all, the Boards needs to decide whether the claims have unity of invention and is not bound by the Guidelines. So there is no applicable edition of the GL in appeal, I would say.
  Secondly, as I understand it, the decision-making body applies the GL as in force of on the date taking the decision, unless there are transitional provisions. So when taking a decision in July 2020, the November 2017 edition is no longer applicable.
  I assume that the Board is not reviewing whether the Examining Division applied the Guidelines correctly in 2017 (that is not the purpose of the appeal procedure in my view when it is about the question whether the claims meet Article 82 or not.).
• The Board: “Claim 1 as originally filed thus describes the invention (i.e. the solution to the above technical problem) from the perspective of the [user equipment] whilst claim 2 as originally filed describes the same invention from the perspective of the network node ”. Therefore these claims have unity of invention according to the Board.
• The Board: “Thus, the reasoning of the examining division drawing upon the aspects of a "single general inventive concept", "special technical features" and "non-unity a-posteriori" is moot and does not need further consideration.”
• I note that Rule 44(1) EPC gives a definition of unity of invention focusing on 'special technical features'. Rule 44(1) was introduced by substantially amending Rule 30 EPC 1973 in 1991. That amendment of the Rules 'introduced the special technical feature as a requirement for unity'  (Visser, 2019 ed., p.501). Rule 44 reads: “the requirement of unity of invention under Article 82 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features”. I find it difficult to see how reasoning about 'special technical features' can then be 'moot'. 
• The EPC 1973 included a Rule 30 on the interpretation of Article 82 from the Munich Diplomatic Conference.

EPO Headnote
(1) As to unity of invention under Article 82 EPC, only if the application relates to more than one "invention", the notion of "a single general inventive concept" under Article 82 EPC and the concept of the "same or corresponding special technical features" under Rule 44(1) EPC have to be assessed for the purpose of deciding upon unity of invention (see Reasons, point 1).
(2) As to a refund of further search fees under Rule 64(2) EPC, the decision to refuse a patent application may be understood to implicitly contain the decision to refuse the refund of a further search fee, if the examining division's intent is clear (see Reasons, point 4).
(3) A statement such as "the next procedural step will be summons to oral proceedings during which the application will be refused" made prior to a final decision to refuse a patent application may infringe a party's right to be heard and thus may lead to a substantial procedural violation (see Reasons, point 5).

EPO T 1414/18 - link

Summary of Facts and Submissions

I. The appeal is against the decision of the examining division refusing the present European patent application. The grounds for refusal of the examining division consisted of a mere reference to their latest communication pursuant to Article 94(3) EPC dated 27 March 2017.

II. A partial European search report under Rule 64(1) EPC for the present application had been issued by the search division on 6 November 2014. In an annex to this search report ("sheet B"), the search division indicated that the application contained two inventions and thus did not meet the requirements of unity of invention. The search division found that claim 1 as well as, partially, dependent claims 3 to 13 on file related to the first invention and claim 2 to the second invention, and conducted a search for the first invention pursuant to Rule 64(1) EPC.

In addition, the applicant was invited via EPO Form 1507U to pay a further search fee within two months in order to have the second invention searched, too.

III. After payment of the further search fee, a full European search report covering both inventions was issued on 26 March 2015.

IV. In a communication under Article 94(3) EPC of 22 April 2015, the examining division confirmed the search division's view on lack of unity under Article 82 EPC.

V. In their reply of 1 September 2015, the applicant contested the examining division's assessment of unity of the invention and requested a refund of the further search fee. This request was maintained by their submission of 13 June 2016.

VI. In their further communications under Article 94(3) EPC of 3 December 2015 and 27 March 2017, the examining division maintained their non-unity objection. In particular, the communication of 27 March 2017 included the following statement (cf. point 1, last paragraph):

"In the present case, two searches needed to be performed as claim 1 discloses a broad claim relating to scheduling meanwhile claim 2 is restricted to specific features describing overlapping frames. As seen by the documents cited in the search report, two searches were performed and different documents were found."

In addition, that communication comprised the following closing (cf. points 4 and 5):

"4 As to the reimbursement of the search fee. The preliminary opinion of the examining division is to refuse the reimbursement of such fee ...

5 The next procedural step will be summons to oral proceedings during which the application will be refused (Article 97(2) EPC)."

VII. In reaction to the above communication, the applicant withdrew the request for oral proceedings and requested an appealable "decision according to the state of the file".

VIII. In the statement of grounds of appeal, the appellant requests that the decision under appeal be set aside and, as a main request, that a patent be granted on the basis of the claims subject to the decision under appeal, or, in the alternative, on the basis of the claims of an auxiliary request filed with the statement of grounds of appeal.

It is also requested (again) that the further search fee be refunded.

Reasons for the Decision

1. Unity of invention - originally filed claims (Article 82 EPC)

1.1 According to Article 82 EPC, a patent application "shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept".

That means that only if the application relates to more than one "invention", the notion of "a single general inventive concept" under Article 82 EPC and the concept of the "same or corresponding special technical features" under Rule 44(1) EPC come into play, i.e. have to be assessed for the purpose of deciding upon the question of unity of invention. As a consequence, it is first to be determined whether the present application covers only one or several "inventions".

1.2 In order to properly assess the compliance with Article 82 EPC, the underlying "invention(s)" is(are) to be established on the basis of the technical problem(s) to be solved according to the description of the application in question (see e.g. W 11/89, OJ 1993, 225, point 4.1; W 6/97, point 6.3; T 173/06, point 8; T 1888/09, point 2.1). This is apparently also endorsed by the Guidelines for Examination in its applicable edition of November 2017 (see e.g. F-V, section 8, second paragraph, and section 8.1, penultimate sentence).

1.3 In the present case, the original application as a whole (i.e. including the description and drawings) refers consistently to a single invention, the objective of which is "to provide a method to configure timing resource so that data transmission/reception for D2D communication and normal communication do not interfere with each other" (see e.g. paragraph [0008] of the description as filed). According to paragraph [0029] of the original description, "... [t]he process 50 used for the network node may be in coordination with the process 40 used for a UE ...".

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 0674/17 - Switching of invention

Key points

• In this examination appeal, the amendment of claim 1 overcomes the Art. 123(2) objections, but " it nevertheless amounts to the presentation of a fresh case." 
• The EPO as ISA had identified two inventions, one with 'porous starch'  the other with 'pre-gelatinized starch' .
• " Upon entry into the European phase, [] the appellant/applicant maintained a set of claims wherein the subject-matter of the sole independent claim 1 was limited to pregelatinized starch as a mandatory feature. The set of claims no longer referred to porous starch, let alone agglomerated porous starch. All sets of claims filed in the subsequent examination proceedings, including those filed with the statement setting out the grounds of appeal, were limited to pregelatinized starch as the mandatory, essential ingredient. It was not until the new main request was filed that (agglomerated) porous starch was introduced into claim 1 as a mandatory feature." 
• " Thus, the appellant's new main request effectively aims at starting second examination proceedings on an invention that it had not pursued before." 
• " In summary, the new main request []  introduces into the proceedings considerably different subject-matter which in fact amounts to the presentation of a fresh case. By virtue of its powers under Article 111(1), second sentence, EPC the board exercises its discretion not to admit the new main request into the proceedings, in accordance with Rules 137(3) and 100(1) EPC."
• As a comment, both inventions were searched by the EPO as ISA. Furthermore, the decision seems in line with T 0736/14 (hn and para. 3.2.1) but makes it a bit more clear that Rule 137(3) is the appropriate legal basis (if the amendment is made after the time limit of that rule). 

EPO T 0674/17 - link

2.3 Although the amendment in claim 1 might overcome the board's objections under Article 123(2) EPC as regards previous requests, it nevertheless amounts to the presentation of a fresh case. If the new main request were to be admitted into the proceedings, the examination carried out so far on the basis of documents D1 and D2 would become pointless. Moreover, the focus of the proceedings would shift to clarity and to interpretation of the feature "agglomerated porous starch" and, more importantly, examination would have to concentrate on a different set of prior-art documents. In short, admitting this request at this stage of the proceedings would go against the EPO's and the boards' interest in bringing the examination and appeal procedure efficiently to a close.

2.4 The fact that the new main request concerns fresh subject-matter is additionally highlighted by the following:

T 0145/13 - Rule 137(5) is not for non-searched claims

Key points

• In this examination appeal, the ED did not admit under Rule 137(5) EPC a request wherein claim 1 was amended to include the feature of claim 30 as pending when the supplementary European search report was established, because that claim 30 was directed to a fifth invention and no additional search fee was paid for that claim.
• However, Rule 137(5) requires that subject-matter is unsearched subject-matter and does not combine with parts of the originally claimed invention to form a single general inventive concept. Therefore, Rule 137(5) EPC does not apply. 
• As a comment, the Guidelines expressly say so in H-II. 7.2: " 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."
• Rather, Rule 164(2) (in the applicable version) should have been applied. " It is the intention of the second alternative of Rule 164(2) EPC to prevent the applicant from switching during the grant proceedings from searched subject-matter to ­subject-matter which had originally been claimed but not searched due to non-payment of the additional search fee (see T 442/11).
• As a note, Rule 164 does not spell out the consequence of not paying the additional search fee, in the applicable version it just mentioned that an invitation is issued to restrict the application. The actual legal basis for not admitting the request is G 2/92 and Rule 137(3) EPC (edit 07.10.2017: Rule 137(3) is not relevant, the claim is still to be refused even if filed in time under Rule 137(3) EPC). 
• The Board reviews whether the finding of lack of unity of invention in the ESR was correct. The ED based on a posteriori lack of unity in view of D1, but the cited paragraph of D1 is " merely an outlook on various possible future developments"  and does not provide an enabling disclosure. Therefore, it can not support the alleged lack of unity of invention. Claim 30 should have been searched and the request is admitted.. 

Reasons for the Decision

1. Main request

1.1 Rule 137(5) EPC

1.1.1 The claims of the main request are those of the first auxiliary request before the examining division. In the decision, the division held that this request was not accepted into the procedure for violation of Rule 137(5) EPC, because the features "adaptive cruise control", "collision warning or avoidance", "exterior light control imaging", "blind spot warning" and "night vision" of claim 1 of this request formerly constituted the fifth and unsearched invention as identified in the supplementary European search report (see point 5 of the decision).

J 0013/13 - Rule 36 (old) time limit

Key points

• An objection under Rule 43(2) EPC does not trigger a new 24-months time limit for filing a divisional application under Rule 36(1)(b) EPC (old) because it is not based on lack of unity of invention. The introductory phrase "without prejudice to Article 82" in Rule 43(2) EPC means that the rule does not change the application of Article 82 EPC, not that the rule is based on Article 82 EPC. 

EPO  J 0013/13 - link

Sachverhalt und Anträge

I. Die Beschwerde richtet sich gegen die Entscheidung der Eingangsstelle vom 18. März 2013, die europäische Patentanmeldung Nr. XXXXXXXX.X nicht als Teilanmeldung der früheren Anmeldung Nr. YYYYYYYY.Y zu behandeln und den Antrag auf Wiedereinsetzung zurückzuweisen.

T 2248/12 - Unity

Key points

• The Board notes, following established case law that " The assessment of unity of invention requires as a precondition the analysis of the technical problem or problems underlying the respective groups of inventions, because only then is it possible to decide whether or not the same or corresponding special technical features exist for the different embodiments under consideration" 
• In this examination appeal, the Board finds that: " The "special technical features" [] common to the three variants S96C, R170C and K179C are that (i) the residues present at the three positions in the native protein are substituted by a cysteine, (ii) the three positions lie outside of the receptor contact region [] and (iii) these positions display a high solvent accessibility. The technical effects resulting from these features are that the three variants are readily PEGylated, and yet substantially retain their biological activity []. Consequently, the board considers that the technical problem underlying the three variants (see point 4 above) is the provision of Apo2L variants which are readily PEGylated and biologically active.
• As a note, this decision shows that, a rejection for lack of unity of invention requires an in-depth analysis of the patent application, not an analysis of the claims only.

EPO T 2248/12 -  link

Reasons for the Decision

Unity of invention (Article 82 EPC)

1. In the European grant procedure, the ultimate responsibility for establishing whether an application complies with the requirements of Article 82 EPC rests with the examining division, which has the duty to review the unity assessment made by the search division. The fact that the appellant has not paid further search fees does not prohibit this review (see e.g. decision T 631/97, headnote and points 3.6 to 3.8 and 3.9.2 of the Reasons).

T 0830/11 - No Rule 43(2) in opposition

Key points

• The Board decides that Rule 43(2) EPC (multiple independent claims in the same category) is not applicable in opposition. This is based on G 1/91.
• Filing date in 1998, grant in 2007. Now a remittal.

T 0830/11 - link 

8. Appellant's auxiliary request 4

8.1 Auxiliary request 4 comprises three independent claims 1, 2 and 4. Said claims correspond, respectively, to a combination of claims 1, 2 and 3, claims 1, 2 and 4, and claims 1, 2 and 7 of auxiliary request 2.

8.2 Auxiliary request 4 was not admitted by the opposition division into the opposition proceedings under Article 114(2) and Rule 116(2) EPC because the three independent claims did not fulfill the requirements of Article 84 EPC 1973 as to conciseness and of Rule 43(2) EPC concerning "multiple claims" in the same category. In particular, the opposition division held that the claims were all of the apparatus category and related neither to interrelated products nor to different uses nor to alternative solutions to a particular problem. While claims 1 and 2 were considered to relate to different solutions of the problem of miniaturisation, claim 4 was considered to address the different problem of decoupling of the two output ports and common coupling port.

8.3 Under the circumstances, the role of the Board is, primarily, to ensure that the opposition division made a correct application of its discretion and, in particular, that it applied the correct principles when exercising said discretion.

8.3.1 In this respect, it is noted that auxiliary request 4 was filed for the first time during the oral proceedings before the opposition division (cf. minutes of the oral proceedings before the opposition division, page 5, third paragraph). The exercise by the opposition division of its discretion in order to decide on the admissibility of said late filed auxiliary request 4 was thus legitimate.

8.3.2 The Enlarged Board of appeal held in decision G 1/91 (OJ 1992, 253; Headnote) that:

"Unity of invention (Article 82 EPC) does not come under the requirements that a European patent and the invention to which it relates must meet under Article 102(3) EPC when the patent is maintained in amended form. It is consequently irrelevant in opposition proceedings that the European patent as granted or amended does not meet the requirement of unity".

The opposition division noted in section 6.2 of its decision that "the requirements of Art. 84 and Rule 43(2) EPC have to be fulfilled, regardless of the fact that Article 82 EPC only relates to the European patent application". The position adopted by the opposition division is thus tantamount to deprive the decision of the Enlarged Board of any effects, since it leads to the finding that a request including a plurality of independent claims must be rejected for this very reason.

In the Board's judgement, the condition of conciseness of Article 84 EPC 1973, as well as the dispositions of Rule 29(2) EPC 1973 (Rule 43(2) EPC), have to be construed in opposition proceedings in the light of the findings by the Enlarged Board of appeal (cf. decision G 1/91, Reasons, point 4.2) that "the administrative purposes of unity are fulfilled in the main up to the time the patent is granted. ... In view of the object and purpose of both unity and opposition, it seems neither necessary nor appropriate to continue to attach importance to any lack of unity at the opposition stage. Once the examination procedure has been concluded with the grant of a patent, the requirement of unity has fulfilled its administrative function".

The requirements of Rule 29(2) EPC 1973 (Rule 43(2) EPC) should therefore not constitute an obstacle for the patentee to defend the patent in all its branches (cf. decisions T 263/05 (OJ 2008, 329) and T 1416/04, not published).

In order to avoid any misunderstanding, it should be emphasized that the Board does not question the general applicability of Article 84 EPC 1973 as to conciseness and of Rule 29(2) EPC 1973 (Rule 43(2) EPC) in opposition proceedings. The Board only considers that these norms do not apply to sets of claims whose subject-matter was already claimed in the granted version of the patent.

8.4 In conclusion, the Board considers that the opposition division did not correctly exercise its discretion when deciding on the admissibility of auxiliary request 4 then pending.

8.5 Therefore, the Board admits appellant's auxiliary request 4 into the appeal proceedings.

9. Remittal of the case to the opposition division (Article 111(1) EPC)

During the oral proceedings before the Board, the appellant requested that the case be remitted to the opposition division for further prosecution in case that the Board would admit appellant's auxiliary request 4 into the proceedings. The respondent made no comments in this respect.

In view of this, the Board has no reasons to reject the request for remittal.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution.

T 0736/14 - One invention examined

EPO Headnote

If an applicant whose application is non-unitary responds unclearly and/or in a misleading way to an invitation from the examining division to designate which searched invention it wishes to prosecute further (e.g. by submitting a main request covering one invention and an auxiliary request covering the other invention searched), it cannot be automatically assumed that the applicant selected the invention covered by the main request for examination. Rather, the examining division must clarify, e.g. via a further communication, which of the searched inventions the applicant actually wants it to examine. Confronting the applicant with an irrevocable decision not to admit an auxiliary request covering one of the inventions searched, without giving an opportunity to comment on its admissibility beforehand, is regarded as a substantial procedural violation (see Reasons, point 3).

Analysis

• The present case concerns the application of the remark in G 2/92 that: " At the examination stage, having regard to the requirement of unity of invention and the fact that only one examination fee can be paid for each application, clearly only one invention in each application is to be examined for conformity with the patentability and other requirements of the EPC"

EPO T 0736/14 - link

T 1995/12 - Unity of invention

EPO T 1995/12

For the decision, click here.

Key points

• Claim 1 on entry of the regional phase was based on claim 32 of the PCT application, which was searched. Claim 1 also includes features of claims 21 and 35 , which claims were not searched as being directed to a second invention. The description disclosed these features also for the first invention, such that the claim has basis in the application as filed.  The Board decides that, for the purpose of Rule 164, claim 1 is directed to a searched invention. 

Entscheidungsgründe

3. Regel 164 EPÜ - Prüfung der Einheitlichkeit durch das Europäische Patentamt

3.1 Die mit der internationalen Anmeldung eingereichten Ansprüche sind vom Europäischen Patentamt als Internationale Recherchenbehörde als nicht einheitlich angesehen worden. Der entsprechenden Aufforderung zur Zahlung weiterer Recherchengebühren ist die Anmelderin nicht nachgekommen, sodass nur die der ersten Erfindung zugeordneten Ansprüche 1 bis 13 und 32 bis 34 Gegenstand einer Recherche gewesen sind. Der vorliegende, geänderte Anspruch 1 weist jedoch nicht nur Merkmale der recherchierten Ansprüche 1, 32 und 34 auf, sondern auch Charakteristika der ursprünglichen Ansprüche 21 und 35, die der zweiten und dritten Erfindung zugeordnet und mangels Gebühren­zahlung nicht recherchiert worden sind. Aufgrund dieser Konstellation ist zu klären, ob die Anmeldungsunterlagen nach dem vorliegenden Hauptantrag die Erfordernisse von Regel 164 (2) EPÜ in der hier anwendbaren, vom 1. April 2010 bis zum 31. Oktober 2014 gültigen Fassung (im Folgenden bezeichnet als Regel 164 (2) EPÜ) erfüllen, die im zweiten Halbsatz vorsieht, dass die Anmeldung auf eine einzige Erfindung zu begrenzen ist, die im internationalen Recherchenbericht (oder im ergänzenden europäischen Recherchenbericht) behandelt wurde.

3.2 Die Erläuterungen zur Regel 164 (2) EPÜ in Dokument CA/PL 17/06 (vgl. Sonderausgabe 5 zum ABl. EPA 2007, 278) betonen, dass in Übereinstimmung mit der Stellungnahme G 2/92 (vgl. ABl. EPA 1993, 591) eine Sachprüfung grundsätzlich nur in Bezug auf eine recherchierte Erfindung durchgeführt wird.

Folglich soll der hier relevante zweite Halbsatz der Regel 164 (2) EPÜ insbesondere verhindern, dass während des Erteilungsverfahrens einer Euro-PCT-Anmeldung von einer recherchierten Erfindung auf eine ursprünglich beanspruchte, aber wegen Nicht-Zahlung der zusätzlichen Recherchengebühr nicht recherchierte Erfindung gewechselt wird.

3.3 Im vorliegenden Fall ist in dieser Hinsicht festzu­stellen, dass der geltende Anspruch 1 sämtliche Merkmale des ursprünglichen Anspruchs 32 aufweist. Er betrifft damit weiterhin die erste, recherchierte Erfindung, die mit Merkmalen der ursprünglichen Ansprüche 21 und 35, die der zweiten bzw. dritten Erfindung zugeordnet worden sind, weiter eingeschränkt ist, wofür es in der ursprünglichen Beschreibung auf Seite 12, zweiter Absatz, sowie im einzigen Ausführungsbeispiel ab Seite 13 eine grundsätzliche Offenbarung gibt. Es wird also mit dem vorliegenden Verwendungsanspruch 1 weiterhin Schutz für den als erste Erfindung benannten Gegenstand begehrt. Da dieser im internationalen Recherchenbericht behandelt worden ist, liegt kein Wechsel zu einer nicht recherchierten Erfindung vor, was zu verhindern, wie oben dargelegt, die Intention der Regel 164 (2), zweiter Halbsatz, EPÜ ist. Deren Vorschriften stehen dem Hauptantrag folglich nicht entgegen.

T 0034/12 - Rule 164 and amendments of the claims

T 0034/12

For the decision, click here. 
Key points

• Rule 137(5) EPC is a powerful tool for the examiner, but recent case law demonstrates that it is difficult to handle. The present case is an example.
• The Examiner had found D1 anticipating an embodiment of claim 1. Interestingly, he issued a partial search report, alleging lack of unity of invention of claim 1 between the anticipated embodiment wherein a certain monomer is a " diquat" and all other embodiment of claim 1. The applicant did not pay a second search fee, and added a feature from the description to distinguish over D1. The ED refused the application as still relating to embodiment wherein the monomer is not a diquat. 
• The Board finds a substantial procedural violation since the decision is insufficiently reasoned.
• As a comment, note that Rule 164 and Rule 137(5) do not turn on lack of unity of the claims of the application as filed. As the Board states: "If [the] objection of lack of unity of claim 1 turned out to be unjustified in view of the amendment to the claims, the applicant would have been entitled to have the full claimed subject-matter searched." (emphasis added). This despite Rule 164(2) also covering the case that an invention is claimed which is " not covered by the international search report" . Apparently, this must be read in the same way as in Rule 137(5) EPC, namely: unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a singe general inventive concept. Hence, adding features from the description should probably be allowed in the same way as for Rule 137(5), as explained in GL H-II,6.2

Rule 164(2) (old: 01.04.2010 - 31.10.2014)
(2) Where the examining division finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the international search report or, as the case may be, by the supplementary international search report or supplementary European search report, it shall invite the applicant to limit the application to one invention covered by the international search report, the supplementary international search report or the supplementary European search report


Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division refusing the European patent application 06 821 491.5 under Article 97(2) EPC on the grounds of "lack of compliance with Rule 164(2) EPC by a repeated violation of Rule 137(5) EPC".

II. The application under appeal was filed under international application number PCT/IB2006/054324 and published as WO2007/057865. The European Patent Office acting as the International Searching Authority, issued an international search [...] report (ISR) and a Written Opinion of the International Searching Authority (WOISA), both covering all claims 1-25 on file.

X. A decision to refuse the European Patent application was issued on 1 July 2011. The decision reads:

T 0755/14 - Unity of invention a posteriori: requires inventions

EPO T 755/14

For the decision, click here.

Key points

• The Board explains that for a lack of unity of invention of dependent claims a posteriori, it is required that the features of these claims define inventive subject matter. In case the dependent claims are considered to lack inventive step, they can not cause a lack of unity of invention.
• " Bei einer konsistenten Prüfung der Einheitlichkeit a posteriori zum Zeitpunkt der Erstellung des Teilrecherchenberichts oder aber spätestens zum Zeitpunkt der Erstellung des Recherchenberichts hätte die Recherchenabteilung mithin feststellen können und müssen, dass die zusätzlichen Merkmale der abhängigen Ansprüche 2, 4, 8, 9 und 10 jeweils keinen Beitrag zu dem zum Zeitpunkt der Versendung der Aufforderung nach Regel 64 (1) EPÜ verfügbaren Stand der Technik leisten und mithin keine "besondere technische Merkmale" im Sinne der Regel 44 (1) EPÜ darstellen können []. Demnach können die Ansprüche 2, 4, 8, 9 und 10 per definitionem gar keine Erfindungen im Sinne der Regel 44 (1) EPÜ darstellen. Der erhobene Einwand der mangelnden Einheitlichkeit a posteriori war mithin unbegründet."
• A similar reasoning is given in T 0129/14 at [5.4.]: " However, for each group of claimed inventions, the Examining Division should have identified special technical features and established a respective technical problem solved over document D1, i.e. the prior art considered in its assessment. This is not only clear from the established case law of the boards of appeal, but also directly derivable from the wording of Rule 44(1) EPC, which explicitly mentions, for each claimed invention, "a contribution [...] over the prior art".

Entscheidungsgründe

1. Angesichts der erstinstanzlichen Umstände des Falles hält es die Kammer für angebracht, kurz auf die Vorschrift der Einheitlichkeit sowie auf die etablierte Rechtsprechung zu dieser Vorschrift einzugehen.

1.1 Nach Artikel 82 EPÜ darf eine Anmeldung nur eine einzige Erfindung enthalten oder eine Gruppe von Erfindungen, die untereinander in der Weise verbunden sind, dass sie eine einzige allgemeine erfinderische Idee verwirklichen. Sind in einer Anmeldung mehrere Erfindungen beansprucht, ist das Erfordernis der Einheitlichkeit der Erfindung nach Artikel 82 EPÜ nur dann erfüllt, wenn zwischen diesen Erfindungen ein technischer Zusammenhang besteht, der in einem oder mehreren gleichen oder entsprechenden "besonderen technischen Merkmalen" zum Ausdruck kommt (Regel 44 (1) Satz 1 EPÜ). Unter dem Begriff "besondere technische Merkmale" sind diejenigen technischen Merkmale zu verstehen, die einen Beitrag jeder beanspruchten Erfindung als Ganzes zum Stand der Technik bestimmen (Regel 44 (1) Satz 2 EPÜ). Gemäß ständiger Rechtsprechung der Beschwerdekammern meint der Begriff "Beitrag" in diesem Zusammenhang einen neuen und offensichtlich erfinderischen Beitrag zum Stand der Technik (siehe die Rechtsprechung der Beschwerdekammern des Europäischen Patentamts, 7. Auflage 2013, kurz "RsprBK 2013", II.B.5.1 und 5.2).