This is an examination appeal concerning a Euro-PCT application.
The EPO, acting as ISA, pointed out that the application contained six inventions and invited the applicant to pay five additional search fees. The applicant did not pay any additional fee.
Upon entry into the European phase, on October 13, 2006, the Examining Division (ED) confirmed the objection of lack of unity. The applicant did not pay a supplementary search fee (which was still possible at that time, even though the EPO had acted as ISA) but filed a new set of claims comprising a method claim and a device claim (both of which were mixes of features of inventions 1 and 2 according to the ISA).
On October 18, 2010, the ED refused the application and justified this refusal by pointing out that the claims corresponded to invention 2, which had not been searched, which meant that the claims on file did not comply with the then applicable R 137(4).
The applicant filed an appeal and argued that it had further delimited the first invention by adding features taken from the second invention.
The Board found the claims on file to comply with A 123(2) and then went on to say:
*** Translation of the German original ***
R 137 – Amendment of the European patent application
[2.2.1] The application under consideration was filed on July 11, 2005, as an international application and entered the European phase on October 13, 2006. At the time of the entry into force of the EPC 2000, on December 13, 2007, it was already pending before the EPO. According to the transitional provisions for the Implementing Regulations to the EPC 2000 (see the “Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the EPC 2000”, OJ EPO 2007, Special Edition 1, 89) the applicability of a Rule depends on the transitional provisions for the corresponding Article to which the Rule refers.
R 137 concerns amendments of the European patent application and, therefore, constitutes an implementing regulation to A 123. The transitional provisions for the EPC (see the “Decision of the Administrative Council of 28 June 2001”, OJ EPO 2007, Special Edition 4, 219) provide in Article 1, first paragraph that they shall apply to all European patent applications pending at the time of its entry into force, which includes the present application.
By a “Decision of the Administrative Council of 25 March 2009” (OJ EPO 2009, 299) R 137 has been amended. R 137 as amended shall apply to European patent applications for which the European search report or the supplementary European search report is drawn up on or after April 1, 2010.
As the European search report for the application under consideration was drawn up before April 1, 2010, R 137 as amended by the Decision of the Administrative Council of 25 March 2009 is not applicable here. R 137(4) in the version that was in force from December 13, 2007, to March 31, 2010 (hereinafter referred to as R 137(4), version of before April 1, 2010) has to be applied.
[2.2.2] R 137(4), version of before April 1, 2010, provides that amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. Thus the wording of the provision is identical to that of R 86(4) EPC 1973, which entered into force on June 1, 1995, and which was introduced into the Implementing Regulations in order to hinder applicants from modifying the scope of protection, in the course of the examination proceedings, so that it encompasses unsearched parts of the application that had not been claimed so far (see the “travaux préparatoires” concenring R 86(4) EPC 1973, published in the “Notice dated 1 June 1995 concerning amendment of the EPC, the Implementing Regulations and the Rules relating to Fees”, OJ EPO 1995, 409 et seq., in particular pages 420 et 421).
[2.2.3] The reasons for the impugned decision state that the subject-matter of claims 1 and 19 according to the main request do not comply with the requirements of R 137. The gist of the argument of the ED is that the original claims 1 to 45 are not unitary and decompose into six inventions. In the main request the original independent claims 1 and 21 have been limited by adding features of the original dependent claims 3 and 20 and 23 and 20, respectively, which had been considered to belong to the second invention. However, as no search report had been established for the second invention, the requirements of R 137(4) had not been complied with.
[2.2.4] The Board cannot endorse this line of reasoning.
The original claims 1 and 19, on which the impugned decision is based, essentially constitute combinations of original claims 1, 3 and 20, and 21, 23 and 40, respectively. As these combinations had already been claimed when the search was carried out, they cannot be objected to according to R 137(4), version of before April 1, 2010, as explained in the travaux préparatoires cited above.
R 164 – Consideration of unity by the EPO
[2.3] As the application under consideration is a Euro-PCT application, the requirements of R 164 also have to be complied with.
[2.3.1] As already explained above, according to the transitional provisions for the Implementing Regulation to the EPC 2000, the applicability of a Rule depends on the transitional provisions for the corresponding Article to which the Rule refers.
R 164 concerns the consideration of unity by the EPO acting as Designated Office or Elected Office and, therefore, constitutes a Rule implementing A 153, for which the above cited transitional provisions to the EPC 2000 stipulate, in Article 1, paragraph 6, that it shall apply to international applications pending at the time of their entry into force, and thus also to the present application.
R 164 was amended by “Decision of the Administrative Council of 27 October 2009” (OJ EPO 2009, 582). The only change was that the Rule as amended takes into account the newly created possibility of carrying out a supplementary international search. R 164 as amended entered into force on April 1, 2010, without there being any transitional provisions. Thus it was applicable at the time of the impugned decision.
[2.3.2] Paragraph 2 of R 164, which concerns substantive examination, reads:
“Where the ED 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.”
Whereas the first part of the sentence of R 164(2), preceding the [first use of the] word “or”, concerns the lack of unity of the invention in respect of the application documents on which the European grant procedure is to be based, the second part of R 164(2), following the [first] “or”, deals with the situation where [the applicant] seeks protection for an invention that had not been covered by the international (or supplementary European) search report. In both cases the rule provides that the applicant is to be invited to limit the application to one invention covered by the international search report.
The explanations regarding the purpose of R 164(2) in document CA/PL 17/06 (see OJ EPO, 2007 Special edition 5, p. 256) insist on the fact that in principle examination is only carried out on inventions covered either by the international search report or by the supplementary search report, in line with Enlarged Board of Appeal decision G 2/92.
It follows that the second part of R 164(2) is intended to hinder [applicants] from switching from a searched invention to an invention which had originally been claimed but which had not been searched because no additional search fees had been paid, in the course of the grant proceedings of a Euro-PCT application.
[2.3.3] As regards the first part of R 164(2), it has to be noted that the present claims 1 to 40 according to the main request only comprise one single independent method claim and one single corresponding independent device claim 19, which only differ in the wording of their features as device or method features. As a rule, an independent method claim and a corresponding independent claim directed at a device that was specially developed for carrying out the claimed method are considered unitary. Since this also holds true for the present set of claims, the application documents on which the European grant procedure is to be based do meet the requirements of unity of invention under R 164(2), first part.
[2.3.4] As far as the second part of said provision is concerned, it has to be taken into account that the present independent claims 1 and 19 both are directed at a combination of features which have been considered to belong to the second invention when the claims were found to lack unity, both in the communication of the ISA and in the impugned decision, and which, as a consequence, have not been searched. However, the application of R 164(2), second part, presupposes that the [ISA] was right not to consider the invention in the international search report. Thus the Board considers it to be necessary to examine whether the subject-matter of original claims 2 and 22 was indeed non unitary with the subject-matter of original claims 3, 20, 23, and 40, i.e. whether it was justified not to deal with the subject-matter of the latter in the international search report.
[2.3.5] In the impugned decision the ED has endorsed the reasons for the finding of lack of unity provided by the ISA and referred to the different problems to be solved by inventions 1 and 2. The ED states in the impugned decision that the second invention solves the problem of “transforming a translational movement of the preform (Vorformling) into a rotational movement” […]. The Board notes that this is the very problem cited in the application as originally filed, in connection with the feature that the preform rolls along an elongated surface, i.e. the subject-matter that the ED has considered to be the first invention. As the subject-matter referred to as first and second invention by the ED apparently solve the same problem, the Board cannot – be it only for this reason – endorse the justification given in the impugned decision for the finding that the subject-matter corresponding to these two inventions […] lacks unity.
Moreover, the Board refers to original claim 5, which is directed at a method where the preform is guided by rails and two rolls. Notwithstanding the fact that this claim has been considered to belong to the second invention, it concerns a combination of the features of the first and second inventions, which interact to ensure a three-point guidance (Dreipunktführung) for the preform […]. In view of this interaction between the rails and the rolls documented in the application, the Board cannot consider the subject-matter of original claims 2 and 22 on the one hand and the subject-matter of claims 3, 20, 23, and 40 on the other hand, to constitute independent inventions.
Therefore the Board comes to the conclusion that at least the subject-matter of the latter claims should have been covered by the international search report or by an additional search during the European phase, as the case may be.
Thus the claims according to the main request do not violate the requirements of R 164(2), second part.
In this context the Board expressly refers to the decision G 1/89 [8.2] of the Enlaged Board, according to which [the EPO] has to take care that the applicant is treated in a fair manner, in particular in case of “a posteriori” objections of lack of unity, and that in border-line cases [the EPO] should refrain from considering an application as not complying with the requirement of unity of invention on the ground of lack of novelty or inventive step.
[2.4] Thus, in the present case, the fact that claims 1 and 19 as amended do not exclusively comprise features of searched claims 1 and 21 but have been limited by the features of original claims 3 and 20 or 23 and 40, respectively, which have not been but should have been searched, may require an additional search, but it does not justify the refusal of the application.
In view of the fact that neither the requirements of A 123(2) nor the requirements of R 137(4), version of before April 1, 2010, and R 164(2) can be objected to the subject-matter of the claims of the main request, the impugned decision has to be set aside.
Remittal to the ED
[3] As the present claims comprise features that have not been searched the application is remitted to the ED for further prosecution, possibly after an additional search has been carried out.
NB: The Board has also prepared a headnote:
R 137(4) in its version of before April 1, 2010, is intended to hinder applicants from changing the scope of protection in the course of the examination proceedings towards unsearched parts of the application that had not been claimed yet when the search was carried out.
The application of R 164(2), second part presupposes that [the ISA] was right not to conisder the invention in the international search report.Should you wish to download the whole decision (in German), just click here.
The file wrapper can be found here.
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