Friday, 25 February 2011

T 264/09 – Back To Search

More of a reminder, really.

[4.1] The board notes that the Examining Division (ED) did not admit a first auxiliary request for the reasons that claim 1 of that request differed from claim 1 of a main request by the addition of a feature which was not present in the claims as originally filed, had not been searched, and did not combine with the originally claimed invention to form a single inventive concept. Consequently, the claim was held not to meet the requirements of R 137(4) (as then in force).

The feature in question related to the portable handheld audio device of the system according to claim 1 as originally filed and further specified that it was adapted to transmit audio data from the portable handheld audio device to the external source.

[4.2] In the board’s view, if a feature which has not been searched and which further defines an element which was already part of a claim which had been searched, is taken from the description and added to this claim in order to overcome an objection under the EPC, e.g. lack of inventive step, this does not result in a claim which has been amended such that it relates to unsearched subject-matter which does not combine with the originally claimed invention to form a single general inventive concept.

The board thereby follows the well-established case law on the interpretation of R 86(4) EPC 1973 see, e.g., T 708/00 [17], T 274/03 [5,6] and T 141/04 [5], it being noted that R 86(4) EPC 1973 has the same wording as R 137(4) (as in force at the date the ED took its decision), which, as from 1 April 2010, is included in R 137(5).

The board notes that the Guidelines for Examination in the EPO (April 2010) are drafted accordingly, cf. section C-VI 5.2(ii) which explicitly mentions the possibility of carrying out an additional search in connection with the examination of amended claims.

[4.3] It follows that in respect of the then first auxiliary request referred to at point [4.1] above the ED was wrong in raising an objection under R 137(4).

[4.4] Turning to claim 1 of present auxiliary request III, this claim includes, inter alia, the additional features that the display means of the portable audio device is suitable for displaying a menu image and that the portable audio device includes means for selecting desired audio data from a menu image which indicates a plurality of pieces of audio data which are stored in the external source. The situation referred to at point [4.2] above applies to this claim in that it includes additional features which were not part of the claims as originally filed and which give rise to the question of whether or not an additional search as provided for in the Guidelines, B-II 4.2(i) and C-VI, 5.2(ii) and 8.2, is required in order to be able to examine the question of whether or not the claimed subject-matter meets the requirements of the EPC, in particular A 52(1) in combination with A 54 and A 56.

[4.5] Having regard to the considerations set out above at points [4.1] to [4.4], the board is of the view that, in the present case, the above-mentioned question of whether or not an additional search is required, is a matter to be considered by the ED.

[4.6] The board therefore judges that it be appropriate pursuant to A 111(1) to remit the case to the ED for further prosecution on the basis of the claims of auxiliary request III.

Should you wish to download the whole document, just click here.

To have a look at the file wrapper, click here.


Myshkin said...

The criterion formulated in point 4.2, although indeed known from previous case law, is interesting.

On the one hand, it suggests that adding a feature from the description to an originally filed independent claim may, at least in theory, result in a claim that can be rejected under R. 137(4), namely if the added feature does not merely "further define an element which was already part of the claim". According to common wisdom, the resulting claim would however not be non-unitary with the originally filed independent claim.

Assuming the non-unity concepts of Art. 82 and R. 137(4) are identical, this would mean that the common wisdom is wrong and that at least in theory there can be non-unity between an independent claim and a dependent claim.

On the other hand, assuming again that the non-unity concepts of Art. 82 and R. 137(4) are identical, this criterion suggests that there can never be non-unity between dependent claims 2 and 3 if independent claim 1 is not new and the additional features of claims 2 and 3 merely "further define an element" already present in claim 1, even if those additional features clearly solve different technical problems. Again this is contrary to common wisdom.

Anonymous said...

Seufz. Nothing new under the sun, really.

I crossed out rules 86(4) EPC73 or 137(4) EPC2K from my copies of the convention a long time ago, after trying to invoke them a couple of times, unsuccesfully. The EPO Guidelines echo the existing case law and essentially neutralises these rules.

Anonymous said...

wondering how the BoA would decide if THEY would have to make the additional search ...

Anonymous said...

wondering how applicants would feel if THEY had to file an expensive divisional due to esoteric and overly-formalistic regulations of the EPC.

suck it up. you have a job because you have clients, i.e., applicants.

pat-agoni-a said...

The formalistic and unreasonable approach is something like:
The subject-matter of claim 1 is not new. Any claim formed from claim 1 plus something taken from the description can never be unitary with previous claim 1, since everything they have in common is not new.

Cases like these are not the purpose for which R 137 was drafted. An additional search may involve additional work, but is in such cases necessary (although it could be argued that dependent claims are there for rendering new an independent claim. However, dependent claims are mainly foreseen for limitation procedures after grant).

R 137 is foreseen for cases in which the applicant changes the subject-matter of the claim to a different invention that, although disclosed in the description, was never claimed and thus not searched, making a new search necessary. In this case it seems reasonable that the office charges a further search fee for doing an additional search. I believe, however, that such cases are rare.

Anonymous said...

Dear pat-agoni-a,
The first paragraph of your comment of 27-2-2011 sounds awfully familiar. I have a real life case in which the examiner took exactly this point of view...
So, they do exist!

anonymous3 said...

To Anonymous of pat-a-gonia.

I raise you another real life case.
An application made of two national priorities, with the usual generic claim trying to stretch over both scopes, and not new over 90% of at least one more) search class.
But this time, kaboom, no - zero - nada - zilch dependent claims on which the searcher could base a non unity a posteriori, for countering the maybe so clever but - I hope we can agree -not so fair move of the applicant.

So if we follow to their logical end both strains of thought, of the Board and of the oh-so bad paid for his job anonymous two comments above, the searcher / examiner just have to "suck it up".
And make additional search(es) all along as dependant claims come and go during the procedure. In fact, any details of the description will be better defining an element of the generic claim.

So where do we stop? two inventions in one description? three? 10? Don't worry if it messes with the EPO, as long as you get yours. Tragedy of the commons much?

Along the lines of Kissinger's quip about the Italians,
the lawyers would be almost as clever as they think they are, if only they were less shrewd.

Myshkin said...

Of course, once the applicant has had one opportunity to amend the claims, further amendments can be rejected under R. 137(3), certainly if the amendments do not show convergence to something allowable but go in new directions.

In my view, the argument that filing a divisonal is so expensive is a non-argument: if the prosecution of an application is on average faster because of less possibilities to amend in non-converging ways, this should eventually translate into lower fees (at least corrected for inflation).

The argument that the possibility of filing a divisional has been severely limited seems a stronger argument.

Overly formalistic approaches should of course be avoided, but disclosing potentially inventive concepts only in the description and claiming them later should not be rewarded. At the very least, R. 137(5), first sentence, should not be harder to apply than declaring regular non-unity on originally filed claims.

(R. 137(5), second sentence, is a completely different story.)