J 0014/19 - (II) Stay of proceedings

Key points

• The Legal Board uses this case to give an overview of the legal framework for the stay of proceedings under Rule 14 EPC. A translation is given below. I recommend reading the entire decision.
• All following quotes are translations.
• “[A stay] will take place immediately. The applicant is informed of the stay of the proceedings by means of a communication - without having to be heard beforehand. He then has the opportunity to oppose this and to obtain an appealable decision []. The stay of the grant procedure takes effect immediately on the day on which the fulfillment of the requirements of Rule 14(1) EPC has been proven by the third party [] and can also be pronounced retrospectively to this day” (internal citations omitted).”
• “3.5 If the stay of the proceedings was wrongly ordered by [the Legal Division], in the appeal proceedings only the continuation of the granting proceedings with effect for the future can be ordered. The immediate effect of the stay can neither be eliminated retrospectively nor reversed by a decision in the appeal proceedings [].”
• “According to Rule 14(1) EPC, in order to stay the grant procedure, a third party must prove that the third party (i) has initiated proceedings (ii) against the applicant, (iiii) with the aim of obtaining a decision within the meaning of Article 61(1) EPC”
• “the European Patent Office has no discretion in deciding on a stay under Rule 14 (1) EPC. If a third party proves that the requirements specified in Rule 14 (1) EPC have been met in good time, the grant procedure must be stayed”
• The applicant had also requested a lifting of the stay, based on the argument that the stay was abuse of procedure. The Legal Board then turns to the meaning of that concept under the EPC.
• “ In order to avoid contradictions in valuation, such questions [about alleged abuse of procedure] are to be assessed by the European Patent Office autonomously within the framework of the stay procedure, i.e. independently of national legal systems". 
• “The improper use of a legal right can under certain circumstances constitute abuse of procedure. This is the case, for example, if the exercise of rights is predominantly intended to cause damage and other legitimate purposes take a back seat. Abuse of procedure must be unequivocal and requires careful examination and weighing of the individual circumstances. The burden of proof lies with the person who invokes abuse of procedure”

 

Headnote (translation)

1.) Evidence of the existence of the prerequisites for the stay of the proceedings under Rule 14(1) EPC must be provided during pending grant proceedings and thus before the notice of grant is published in the European Patent Bulletin. Evidence that is submitted after this point in time may not be taken into account by the European Patent Office (No. 4.3 of the reasons).


2.) The question at which point in time a national procedure within the meaning of Rule 14 (1) EPC in conjunction with Article 61(1) EPC is deemed to have been initiated is to be assessed according to the procedural law of the state whose courts are responsible for taking a decision within the meaning of Article 61 (1) EPC (No. 6.1 and 6.2 of the reasons).



3.) When applying foreign law, the European Patent Office must apply this, as far as possible, in the overall context of the foreign legal system. As an international organization independent of state authorities and courts, the European Patent Office is not bound by the case law of national courts for the interpretation of the foreign legal norms to be applied. However, if known to the European Patent Office, national case law of the highest court in particular should be taken into account and assessed in the decision-making process (No. 6.5 of the reasons).


4.) Questions of abuse of rights also arise in the proceedings before the European Patent Office (see e.g. Article 16 (1) e) RPBA 2020). In order to avoid contradictions in valuation, such questions are to be assessed by the European Patent Office autonomously within the framework of the stay procedure, i.e. independently of national legal systems (No. 6.22 of the reasons).

5.) The improper use of a right can under certain circumstances constitute abuse of procedure. This is the case, for example, if the exercise of rights is predominantly intended to cause damage and other legitimate purposes take a back seat. Abuse of procedure must be unequivocal and requires careful examination and weighing of the individual circumstances. The burden of proof lies with the person who invokes abuse of procedure (No. 13.1 of the reasons).

J 0014/19 -  J14/09

https://www.epo.org/law-practice/case-law-appeals/recent/j190014du1.html

 

Translation

 [...]

2. Right to the grant of a European patent

 2.1 According to Article 60(1) EPC, the right to a European patent belongs to the inventor or his successor in title. In proceedings before the European Patent Office, according to Article 60(3) EPC, it is deemed that the respective applicant - i.e. the person who formally requested the grant of the European patent - has the right to the European patent.

2.2 The European Patent Office is not empowered to decide whether a particular applicant has a claim under Article 60(1) EPC to the grant of a European patent for the subject matter of a particular application (G 3/92, No. 3 of the reasons). According to the Protocol on Recognition, the courts of the contracting states are exclusively responsible for this. These can award the right to the grant of the European patent to a person who is different from the applicant before the European Patent Office.

G 4/19 - Double patenting

 Key points

• The Enlarged Board confirms the EPO's practice that applications can be refused for double patenting under Art. 125. The referring Board had doubted Art. 125 as the legal basis.
• The Enlarged Board: “Article 125 is dealt with in the Minutes of the Proceedings of Main Committee I [of the 1973 Diplomatic Conference], points 665. to 669., with points 665. to 668. being dedicated to the issue of double patenting, while point 669. records the unanimous opinion that the EPO may correct inadvertent errors [note: see Rule 139 EPC 2000]. ”
• “Point 665. is worded as follows in the English version: "In connection with Article 125, it was established at the request of the United Kingdom delegation that there was majority agreement in the Main Committee on the following: that it was a generally recognised principle of procedural law in the Contracting States that a person can be granted only one European patent for the same invention in respect of which there are several applications with the same date of filing."” “ the proper interpretation of this statement is rather that it "... followed from the ... principles of procedural law in the Contracting States that only one European patent [can be granted]...". ”
• “the preparatory documents demonstrate with overwhelming certainty that there was a real and effective agreement that the European Patent Office should prohibit double patenting by taking into account principles of procedural law generally recognised in the Contracting States, i.e. by a direct application of Article 125 EPC. Furthermore, there must have been a common understanding among the potential signatories to the Convention that this majority agreement was made on behalf of the Plenary of the Diplomatic Conference and recorded with the purpose of defining the scope of Article 125, and that therefore the principle expressed in the agreement [i.e. point 665 cited above] formed part of the Convention. ... the competent legislator, here the Diplomatic Conference, established that the prohibition on double patenting was a generally recognised principle as a question of fact, and in addition made it clear that this was a principle falling under Article 125 EPC as a matter of interpretation of the law, [and] the Office was thereby not only empowered to apply this principle but effectively also duty-bound to do so.”
• The above are some of the key paragraphs of the very thorough legal analysis of the Enlarged Board.
• The Enlarged Board also notes that Art. 123(2) (added subject-matter) is a ground for refusal even though it is comprised in Chapter I of Part VII of the EPC with the title ‘Common provisions governing procedure’. Hence, the term ‘procedural law’ in Article 125 does not exclude consideration of double patenting under that provision: “Thus the Enlarged Board concludes that, from a purely systematic point of view, Article 125 EPC may provide a legal basis for the regulation of double patenting - whether this means permitting or prohibiting it - even though a consideration of substantive issues such as "the same subject-matter" may be involved as well.”
• “The Enlarged Board reads Question 2.1 narrowly, and as essentially asking whether the possible legal basis in the EPC is equally applicable to the three identified constellations, or whether there may be reasons for treating them differently, for example by establishing an exception for one of them. Further questions which may arise in connection with double patenting, such as the question of the same invention or the same applicant, are not considered to be covered by the referral.”
• The interested reader may consult C-IV, 6.4, in particular the reference to C-VI,9.6 of the first edition of the Guidelines (1978) [not published on the EPO website currently], basically the GL then required the difference between the claims of the two application to ‘conceivably be of inventive significance’. (Note, I do not think the EPO should revert to the 1978 practice).

Headnote

1. A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC.

2.1 The application can be refused on that legal basis, irrespective of whether it a) was filed on the same date as, or b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or c) claims the same priority (Article 88 EPC) as the European patent application leading to the European patent already granted.

2.2 In view of the answer to Question 2.1 a separate answer is not required.

Comment: headnote 1 should probably be understood in the question of the referral: based on the literal wording of hn.1 the granted European patent may also have a later effective filing date (under USA patent law, (obviousness-type) double patenting objections can apparently be based on later filed patent applications. 

G 4/19 - G 0004/19

https://www.epo.org/law-practice/case-law-appeals/recent/g190004ex1.html

Summary of facts and submissions

I. By its decision in appeal case T 0318/14 dated 7 February 2019 (OJ EPO 2020, A104) and issued in writing on 20 December 2019, Board of Appeal 3.3.01 referred the following questions to the Enlarged Board of Appeal:

"1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent which was granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?

2.1 If the answer to the first question is yes, what are the conditions for such a refusal, and are different conditions to be applied depending on whether the European patent application under examination was filed

a) on the same date as, or

b) as a European divisional application (Article 76(1) EPC) in respect of, or

c) claiming the priority (Article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant?

2.2 In particular, in the last of these cases, does an applicant have a legitimate interest in the grant of a patent on the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?"

II. The appeal before the referring Board (in the following "the Board") was against the decision of the Examining Division refusing European patent application No. 10718590.2 under Article 97(2) EPC in conjunction with Article 125 EPC. The Examining Division found that claim 1 of the sole claim request on file was directed to subject-matter which was identical to the subject-matter claimed in European patent No. 2 251 021, which was granted for the European patent application from which the application-in-suit claimed priority. Granting a second patent on this claim was held to be contrary to the principle of the prohibition on double patenting (in the following also referred to as just "the prohibition"), this being an accepted principle in most patent systems, as stated in the Guidelines. The applicability of the prohibition was furthermore confirmed by an obiter statement in the Enlarged Board of Appeal's decisions G 1/05 and G 1/06. The Examining Division held that the prohibition also extended to European applications claiming an internal priority from another European application, and that decision T 1423/07 was not applicable because the applicants were different in that case.

T 2613/19 - Mandatory ViCo OP at the Boards

 Key points

• Board 3.3.09, making its point in an obiter dictum: “The board and all the parties were in agreement that oral proceedings held by video conference constitute oral proceedings under Article 116 EPC. At present, this understanding reflects the interpretation of this provision according to the case law (see T 2320/16, Reasons 1) and as codified in Article 15a RPBA.”
• “It may be that the Enlarged Board of Appeal at some future date will decide in case G 1/21 that this is not the case. Any such decision would involve a change in the interpretation of law. The Enlarged Board of Appeal normally seeks to ensure that such changes do not have a retroactive effect (see G 3/19, Reasons XXIX). In light of these considerations, the board saw no reason to postpone the oral proceedings and its decision in this case until the Enlarged Board of Appeal had issued a decision in case G 1/21.”
• The decision at hand was taken during vico oral proceedings on 12.05.2021, written decision issued 26.07.2021.
  
  
• There is also an interesting point about Art. 123(2). The application as filed was > 200 pages yet claim 1 at issue lacks basis. Furthermore claim 2 as filed was a list of 40 clauses and the feature that "one or more of all" of these clauses were present. The patentees argued that "The features of claim 2 as filed could be combined due to the formulation "one or more or all". The only question to be answered was whether there was a pointer to the specific combination made. This question was to be answered in the positive." 
• The Board finds that “there is no pointer to select only features (i) and (ii) from original claim 2 or any of the other passages cited by the appellants as a basis for the amendment in the description.”
• “the board is not convinced, as argued by the appellants, that the relative position of a list member of the list recited in claim 2 as filed indicates a corresponding relative preference for that member. Thus, the first two list members would not be considered as being the first two most preferred variants of claim 2 as filed.”
• “Likewise, the statement on page 87, lines 9 to 10 of the description as filed that each possible combination defining the lipid as described in the application is also encompassed does not provide the basis for the combination of exactly the two features (i) and (ii) as specified in original claim 2. Consequently, the board concludes that the list of claim 2 as filed discloses 40 list members of an equal degree of preference. Hence, to arrive at claim 1 as amended, two independent selections have to be made in original claim 2.”

T 2613/19 -

https://www.epo.org/law-practice/case-law-appeals/recent/t192613eu1.html

Reasons for the Decision

1. Request to postpone the oral proceedings (Articles 112a(2)(c), 113(1) and Rule 106 EPC)

The appellants argued that their right to be heard was violated by the holding of the oral proceedings by video conference. The appellants put forward that the COVID-19 restrictions in France (where the appellants' representatives are located) were different from those in Germany (where the respondent's representatives are located) and that the French restrictions had a negative impact on the appellants' preparation of its case. Thus, the appellants implicitly argued that there was an inequality between the parties in that it was easier for the respondent to prepare its case due to the less onerous restrictions it faced. It is this inequality that is the cause of the violation of the right to be heard.

The appellants have not argued that oral proceedings held by video conference as such inevitably lead to a violation of the right to be heard or that they are not oral proceedings within the meaning of Article 116 EPC. Rather, they submitted that they had no objection in principle to the holding of oral proceedings by video conference if it was equitable to do so.

The above arguments were made by the appellants at the oral proceedings before the board. The appellants limited their arguments to generalities and neither carried out any specific analysis of the differences between French and German COVID-19 restrictions nor indicated how these differences had prejudiced their case preparation as compared to the respondent's case preparation.

The board is thus of the opinion that each party has had similar difficulties in preparing its case and that an "equality of arms" prevails between the parties. Such difficulties have not prevented the parties from presenting their cases to the board in the oral proceedings before it, and the appellants have not suggested that this was the case. The board thus finds that no violation of the appellants' right to be heard has taken place. The board thus dismisses the appellants' objection under Rule 106 EPC.

The appellants have not argued that the referral in Enlarged Board of Appeal case G 1/21 requires the postponement of the oral proceedings in this case. They only argued that the outcome of G 1/21 could affect the validity of the present decision. The board and all the parties were in agreement that oral proceedings held by video conference constitute oral proceedings under Article 116 EPC. At present, this understanding reflects the interpretation of this provision according to the case law (see T 2320/16, Reasons 1) and as codified in Article 15a RPBA. It may be that the Enlarged Board of Appeal at some future date will decide in case G 1/21 that this is not the case. Any such decision would involve a change in the interpretation of law. The Enlarged Board of Appeal normally seeks to ensure that such changes do not have a retroactive effect (see G 3/19, Reasons XXIX). In light of these considerations, the board saw no reason to postpone the oral proceedings and its decision in this case until the Enlarged Board of Appeal had issued a decision in case G 1/21.

T 0256/19 - Appellate review of Rule 80 decision

 Key points

• The Board: “Rule 80 EPC represents a non-discretionary provision of the EPC that relates to the allowability of a patent as amended rather than to admissibility.” The Guidelines specify inadmissibility as consequence. 
• This is probably relevant for the appellate review of the decision. Indeed, the Board finds that: “in conclusion, contrary to [the opponent's] request, auxiliary request 1 cannot be disregarded in these proceedings. However, given that the underlying amendment does not lend itself to counter any invoked opposition ground in the present case (cf. point 4.5 above), claim 1 of auxiliary request 1 is not occasioned by such a ground for opposition and is thus not allowable under Rule 80 EPC.”
• The Board bases its analysis on the similar wording of Rule 80 and Article 123(2) EPC. Further, “This conclusion is also corroborated by the preparatory work to Rule 80 EPC (cf. notes on the introduction of Rule 57a EPC 1973, i.e. the predecessor of Rule 80 EPC, in Notice dated 1 June 1995, OJ 1995, 409; see in particular pages 416 and 417, point 2) and thus in line with the legislator's intent (board's emphasis):  "New Rule 57a [Rule 80 EPC] ... addresses the purely substantive aspects of the proprietor's entitlement to amend his patent, and does not specify the point in time up to which amendment is allowed ... Its restriction of the right to amend is in line with the sense and purpose of opposition proceedings, and does away with the need for a discretionary provision like Rule 86(3) [Rule 137(3) EPC]".
• As a comment, I think this Notice requires careful interpretation. Clearly, the OD still has the discretion to hold late-filed amendments inadmissible even if they comply with Rule 80.
• In the board's view, discretion to disregard an amended version of a patent in inter partes proceedings can only emanate from Article 123(1) EPC in conjunction with Rule 79(1) and/or 81(3) EPC and, in case of arranged oral proceedings, with Rule 116(2) EPC (see also T 966/17, Catchword 1; R 6/19, Reasons 6 and 7).”
• I note that also Rule 80 needs a legal basis in some Article of the EPC.
• Quite possibly T 0406/86 is also relevant. Note that the phrase “the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings” currently in Rule 81(3), interpreted in T 406/86, recently recalled in R6/19, originates from the original EPC 1973 rules. 
• Particularly relevant is T 295/87 hn.2: “Amendments to the text of a granted patent during opposition proceedings should only be considered as appropriate and necessary in the sense of Rules 57(1) and 58(2) EPC [1973] and therefore admissible if they can fairly be said to arise out of the grounds of opposition. An amendment proposing new claims having no counterpart in the granted patent, which is not in response to a ground of opposition, is not admissible”
• The subsequent introduction of (now) Rule 80 in 1995 codifies the above case law, with the important addition of "even if that ground has not been invoked by the opponent".
• The consequence of inadmissibility hence originates in old case law. 
• It may be asked whether the consequence under e.g. Rule 137(5) first and/or second sentence is inadmissibility or non-allowability.
• Note that where inadmissibility is solely based on substantive considerations, the  Board's review is not limited by G7/93. 

T 0256/19
https://www.epo.org/law-practice/case-law-appeals/recent/t190256eu1.html

4. Auxiliary request 1: claim 1 - Rule 80 EPC

4.1 Claim 1 of auxiliary request 1 differs from claim 1 of the main request in that here the word "sound" is inserted between the words "voice" and "portion" of feature (e).

4.2 The appealed decision states that the "first auxiliary request does not fulfill [sic] the requirements of Rule 80 EPC, and thus is not admissible" (see point 3.1 of the Reasons; board's emphasis; see also point 6, second paragraph of the Reasons) and refers in that context to the Guidelines for Examination in the EPO (see point 3.1.1, last sentence of the Reasons).

4.3 The board understands from the above statement that the opposition division did not admit the present auxiliary request into the opposition proceedings ("first auxiliary request [...] is thus not admissible"). In that regard, it is worth noting that the referred Guidelines for Examination (edition of November 2017, H-II, 3.2, second paragraph) have the following wording (board's emphasis):

"... where a 'clarification' can be considered as a limitation of the claim, it would be admissible under Rule 80 and could form the basis for maintaining the patent in amended form ...".

The board can only surmise that the opposition division assumed that, if an amendment made to a claim of a granted patent can be considered to be a limitation of that claim, the set of claims (such as the present first auxiliary request) containing that claim is to be admitted into the proceedings, otherwise it is not to be admitted. This suggests that Rule 80 EPC would relate to the matter of admittance (implying a discretionary decision) rather than the matter of allowability (as invoked for the other claim requests on file under Articles 54, 56 and 123(2) EPC).

T 0339/18 - Review decision not to admit opposition ground

 Key points

• The OD held the ground of Article 100(c), submitted after the expiry of the opposition period, to be inadmissible based "its lack of prima facie relevance". The opposition was rejected (also on the other grounds), the opponent appeals and resubmits the Art. 100(c) attack. 
• G 10/91, hn.3 held that fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee; the patentee does not consent in the present case.
• However, is it a fresh ground? 
• T 1286/14, r.1.2.4,  indicates that a ground of opposition rejected as inadmissible by the OD and resubmitted with the Statement of grounds is a "new ground" in appeal.
• On the other hand, what if the Opposition Division made a clear mistake when refusing to admit the ground?
• Based on G 7/93 r.2.6, “a board will only overrule a first instance discretionary decision if it was taken according to wrong principles, or without taking into account the right principles, or in unreasonable way, and thus exceeding the proper limits of the discretion.”
• The present Board follows T 1286/14: “In T 1286/14 the board addressed the limited scope for reviewing exercises of discretion [by the opposition division] to refuse a "fresh ground for opposition" where the proprietor objects to its admittance on appeal. In the case at issue, the opposition division had considered a late-filed ground irrelevant and refused to admit it. In such circumstances, it was sufficient for the board to establish that there was evidence that the opposition division had actually examined whether the ground was prima facie relevant and given reasons for its finding on this. So, instead of reviewing whether the opposition division had examined such prima facie relevance "correctly" in substance, it merely had to check that such an examination had demonstrably been conducted.”
• “In the present case, the board follows the rationale of T 1286/14 and takes the view that it is apparent from the decision under appeal that the Opposition Division has actually examined whether the ground was prima facie relevant and given reasons for its finding on this, as summarised above”
• See also e.g. T 0178/16.
• T 0188/16 recalls that if the decision not to admit a request is based on a substantive assessment (compliance of the amendment with Art. 123(2) EPC), the Board has to review this substantive assessment.

T 0339/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180339eu1.html

Reasons for the Decision

1. Admittance of the new ground under Article 100(c) EPC

1.1 This new ground for opposition was filed with letter of 21 July 2017, i.e. outside the time limit set by Article 99(1) EPC.

1.2 For the board, the Opposition Division correctly found that deciding on its admittance was within its discretion.

1.2.1 In this respect the first instance questioned whether it was prima facie evident that a violation of Article 123(2) EPC was present as the opponent had obviously not noticed it when drafting the notice of opposition, and found that upon taking into account the complete disclosure of the original application, including the examples, it was clear that []

non-soap surfactants (NSS) were present at a ratio to ethoxylated polyethyleneimine (EPEI) polymers of 2:1 to 7:1, so that the ratio NSS/EPEI of 1:2 to 1:7 disclosed on page 12, lines 13 to 19, of the original application was evidently erroneous, and the obvious rectification was to swap the numerical ratio.

Further, the disclosure on page 12 did not link the amount of the polyethyleneimine (PEI) polymers with the disclosed ratio based on the EPEI, and in any case the amount of PEI was anyhow limited by the amended ratio to a value falling within the originally disclosed range for all PEI polymers. Although granted claim 2 referred to the ratio of NSS to EPEI in step b), i.e. after dilution, as no further actives were added upon dilution in step (b), the claimed ratio present in the wash liquor after dilution was the same as that of the detergent composition in step a) of claim 1. Finally, the subject-matter of either of claims 1 and 2 was not based on multiple selections from different lists, as there was ample support in the original application (e.g. page 38, lines 22 to 25) for compositions comprising additionally a soil release polymer (SRP) together with EPEI polymers.

1.2.2 The Opposition Division thus decided not to admit the late-filed ground for opposition under Article 100(c) EPC into the opposition proceedings in view of its lack of prima facie relevance.

1.3 According to an established principle (Case Law of the boards of Appeal of the EPO, 2019, IV.C.4.5.2) a board will only overrule a first instance discretionary decision if it was taken according to wrong principles, or without taking into account the right principles, or in unreasonable way, and thus exceeding the proper limits of the discretion.

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 :

Visser's Annotated EPC 2021 Edition online

 

Visser's Annotated European Patent Convention 2021 Edition is now available online at:

https://www.kluweriplaw.com/book-toc?title=Visser%27s%20Annotated%20European%20Patent%20Convention%202021%20Edition