R 1/13 – The Premise

This is a petition for review of decision T 808/11 of Board of Appeal (BoA) 3.5.03, which had dismissed the patent proprietor’s appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form.

During the oral proceedings (OPs), the Board had raised a clarity objection, in response to which the patent proprietor filed new auxiliary requests. There was a discussion in respect of the new requests at the end of which the chairman stated that amended claim 1 appeared to be clear. After a deliberation, the Board announced that the new requests were not admitted due to a prima facie lack of clarity, dismissed the appeal and terminated the proceedings.

The patent proprietor filed a petition for review. It argued that its right to be heard had been violated, for the following reasons:

• The amendments corresponded to a late objection and should have been admitted.
• The right to be heard under A 113 enshrines the possibility of a full reaction to overcome any late raised objection. This right can be safeguarded only by allowing a full discussion on the merits of new requests. Such a thorough discussion can in turn only be achieved by admitting new requests filed in response to the late objection. A prima facie assessment based on a cursory review made to establish whether a new request is likely to overcome an objection, such as that carried out in this case, is not adequate.
• A 113 overrules Article 13(1) RPBA. The fundamental right to a thorough discussion of new requests filed in response to late objections cannot be overruled by an assessment as to the likelihood of a new request overcoming the late objection, nor can the submission of such requests be considered to be late.
• According to consolidated EPO jurisprudence, prima facie examination is a legal assessment made available to Divisions and Boards for excluding those late filed submissions, e.g. new claims or fresh prior art, which may represent an abuse of the procedure. Responding to a late objection by filing new requests cannot represent a procedural abuse but rather follows from the legitimate right to respond to new issues.
• Assuming that the Board did have a discretion under Article 13(1) RPBA not to admit new requests in response to new objections, it exercised that discretion in an unduly restrictive manner. Considering the belatedness of the objection, neither the complexity of the subject-matter, nor the state of the proceedings, nor procedural economy could justify the adverse exercise of discretion.

The Enlarged Board (EBA) was not impressed:

[8] A 113(1) provides:

“(1) The decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.”

[9] The only violation of that provision alleged by the petitioner is the decision of the BoA not to admit the new requests into the appeal proceedings. However the EBA cannot find any suggestion in the petition of a denial of the petitioner’s opportunity to present its comments on the admissibility of those requests. Indeed, the petitioner refers to and relies on the discussion of the admissibility of those requests which took place during the OPs. Further, the petition itself, all of the five declarations filed therewith, the petitioner’s request to amend the minutes, the respondent’s observations on that request, and the Board’s communication responding to that request all refer to such a discussion. Further still, while the minutes of the OPs do not actually mention the discussion on that subject they do, by reference to the filing of the new requests with annexed copies and by reciting the formal requests of the petitioner, provide further confirmation that a discussion of the new requests took place. The same is true of the BoA’s written decision which refers to the filing of the new requests and the appellant’s view thereon.

[10] The EBA’s case law makes clear that it is sufficient for the purposes of A 113(1) that a reason for a decision under review corresponds to an argument which has been put forward by another party so that the petitioner was aware of it and thus was not taken by surprise. In such circumstances and in the absence of any contention or indication that a BoA has refused to hear the petitioner, it cannot be established that the petitioner had no opportunity to comment within the meaning of A 113(1) (see R 4/08 [3.3]).

[11] In decision R 4/08, the petitioner was the opponent and the decision related to that opponent’s alleged lack of opportunity to comment on the admissibility of the patent proprietor’s new requests. The principle in that decision must apply with at least as much – if not more – force when, as in this case, the petitioner is the patent proprietor and the issue is the admissibility of the petitioner’s own requests.

It is not merely undisputed fact but also part of the case advanced by the petitioner that it knew the objection (lack of clarity) to its previous request, that it filed its new requests to overcome that objection, that it argued its case for admissibility of those requests, and that the Board decided not to admit the requests because they were prima facie not clear and thus did not overcome the objection. Far from showing a denial of an opportunity to comment, the petition confirms that the opportunity occurred.

[12] The petitioner’s view of A 113(1) […] appears to be at variance with the case law (see point [10] above) and the EBA does not agree with the petitioner’s various arguments based on its view of the law. The petitioner refers to A 113 but quite clearly intends only A 113(1). Its arguments, four in number, are to the effect that the BoA did not consider the new requests sufficiently or was obliged to admit the new requests or exercised its discretion incorrectly and each argument is said to demonstrate a violation of A 113. That is inconsistent with the petitioner’s statement in the petition […]:

“The present petition is filed under A 112a(2)(c) on the grounds that a fundamental violation of A 113 occurred in the appeal proceedings of case T 808/11. The negatively affecting decision, hereinafter also “the decision”, violates A 113 in having not admitted the new third and fourth auxiliary requests (also “the new requests”) into the proceedings and in having dismissed the appeal immediately after announcing the non-admittance.”

It is evident that the decision of the BoA is the only alleged violation of A 113 and that the petitioner’s arguments do not each demonstrate a separate violation but are intended to provide reasons why the decision is said to be a violation. The EBA considers each of the four arguments in points [13] to [17] below.

[13.1] The petitioner’s first argument is that A 113 enshrines the possibility of a full reaction to overcome any late-raised objection, a right that can only be safeguarded by allowing a full discussion on the merits of new requests filed in response to a late objection which in turn can only be achieved by admitting such new requests. A prima facie assessment to establish whether a new request is likely to overcome an objection is not adequate to satisfy this supposed right to a thorough discussion under A 113 of all the points at issue. As support for this proposition, the petitioner cited a passage from decision R 3/10 [2.10].

[13.2] This argument is based on the false premise that “A 113 enshrines the possibility of a full reaction to overcome any late raised objection”. In fact A 113(1) does no such thing. It simply provides that decisions shall not be based on matters on which parties have not been heard or, to be precise, on which parties concerned have not had an opportunity to comment.

The decision in question here was whether or not to admit the petitioner’s new requests and, as already explained (see point [9] above), the petitioner had and used the opportunity to comment on that issue.

[13.3] The petitioner’s suggestion that the right to be heard carries with it, in the case of requests filed in response to late objections, a right to a full discussion which transcends the requirement of admissibility is simply incorrect. A late objection may lead to more latitude in the filing of requests in response but there is no certainty of admissibility, let alone of a more thorough discussion if admissibility is achieved. If the petitioner was correct, any request filed in response to a late objection would be admissible even if it clearly had no prospect of overcoming the objection. The requirement of admissibility for late-filed requests serves several purposes – inter alia to ensure the requests offer a prospect of success – and the requirement is not suspended for latecomers, however understandable the lateness of filing their requests may be. If that were not the case, Article 13 RPBA would have little or no purpose (as the petitioner’s second argument tacitly recognizes - see point [14.2] below).

[13.4] In decision R 9/11 [3.2.2] the EBA held that Article 13(2) RPBA, which gives parties a right to comment on new submissions filed by others, does not give those parties automatic admissibility of their new requests; it follows that there can be no such right of automatic admissibility for those making the new submissions. The petitioner submitted […] that R 9/11 was distinguishable from the present case and, in as much as the facts are different, that is correct but that does not mean that the legal significance of the earlier case is to be ignored (see R 11/08 [11]). The procedure for new requests is in fact well summarized in the warning to the appellant in the BoA’s communication […]:

“If amended claims are filed by the appellant, it will be necessary at the OPs to discuss their admissibility and, if these claims are held admissible, to discuss the question of whether or not the amendments, the claims and their subject-matter comply with the requirements of the EPC...”

The EBA also notes that, in the opposition proceedings, the petitioner filed an amended first auxiliary request during the OPs which was held inadmissible for several reasons, apparently after the OD had conducted the usual admissibility appraisal without (so far as the OD’s decision and the minutes of the OPs show) any objection on the part of the petitioner.

[13.5] The petitioner’s only support for its argument was a one-sentence passage it cited from the EBA’s decision R 3/10 which, with an insertion added by the petitioner, reads:

“This right [the right to be heard] would be undermined if it were made dependent on an evaluation as to whether the party’s standpoint is likely to be justified”.

The complete passage from which that sentence is taken reads as follows:

“It is the very essence of the right to be heard that the party is given a full opportunity to defend its case and to persuade the deciding body that its position is the correct one. This right would be undermined if it were made dependent on an evaluation as to whether the party’s standpoint is likely to be justified”.

Thus, in the case of the admissibility of its new requests, the petitioner had to be given a full opportunity to defend its case for admissibility and to persuade the BoA that its position was correct. As already observed (see point [9] above), that is what happened in the present case. In its proper context, the second sentence means no more than that a party should not be denied an opportunity to be heard because he may ultimately succeed or fail. That also happened in the present case in which the petitioner was heard on the admissibility of the new requests even though it ultimately lost (although it would appear from the petitioner’s own view of the chairman’s remark that the Board’s evaluation while hearing the petitioner was that it was likely to succeed). The passage from R 3/10 is entirely consistent with the EBA’s other jurisprudence on the right to be heard (see points [10] to [11] above).

[14.1] The petitioner’s second argument is that A 113 overrules Article 13(1) RPBA since the fundamental right to a thorough discussion of new requests filed in response to late-raised objections can neither be overruled by an assessment as to the likelihood of a new request overcoming that objection nor be considered late-filed, so the Board has no discretion in respect of the admissibility of such requests.

[14.2] This argument is no more than a necessary corollary of the previous argument which, as already observed (see point [13.3] above) would mean that Article 13 RPBA has little or no purpose. It is therefore an argument which the petitioner had to make to be consistent. However, the reasons for rejecting the argument are also consistent with those for rejecting the previous argument – it starts from the same false premise of a “right to a thorough discussion” and, once that false premise is dispelled, the argument cannot take matters any further.

[15] The petitioner’s third argument is that, according to consolidated EPO jurisprudence (an expression the petition does not explain), prima facie examination is a legal assessment for excluding those late filed submissions which represent an abuse of the procedure. Since in the present case, the petitioner was responding with new requests to a late objection, the new requests were not an abuse of procedure so a prima facie assessment resulting in non-admissibility was also a fundamental violation of the right to respond fully to new issues and represents a fundamental violation of A 113. Again, this argument supposes that the petitioner’s fallacious view that A 113 provides a “right of full response” which would avoid any requirement of admissibility is correct. The argument is also circuitous and self-serving – it pre-supposes that an admissibility assessment is only required for submissions which represent (undefined) abuses of procedure, then asserts that the petitioner’s new requests were not an abuse of procedure, and thus absolves those requests from the need for an admissibility assessment.

[16.1] The petitioner’s fourth and final argument was that, despite the previous arguments and assuming that the Board did have a discretion under Article 13(1) RPBA not to admit new requests in response to late objections, the Board exercised that discretion in an unduly restrictive manner. Thus, by reference to the provisions of that Article, the new requests could not be considered late and did not introduce any complexity as they attempted to overcome the objection; the state of the proceedings could not apply since the petitioner was responding to a new objection to terms which had been on file since the beginning of the appeal procedure; and procedural economy could not justify the adverse exercise of discretion since that would outweigh the right of the petitioner to defend its case. Thus the Board’s exercise of its discretion under Article 13(1) RPBA offended the more fundamental rights enshrined in A 113.

[16.2] Yet again this argument supposes “more fundamental rights enshrined in A 113” than can be read into that Article and, additionally, that those rights alleged to flow from A 113 override Article 13 RPBA. It is a combination of the three earlier arguments presented as an assessment by reference to the three criteria – complexity of new subject-matter, the state of the proceedings, and procedural economy – mentioned in Article 13(1) RPBA. The petitioner however overlooks that Article 13(1) RPBA states that the Board’s discretion shall be exercised in view of inter alia those criteria. Thus other considerations relevant to the admissibility issue in question can, and in practice are, taken into account. In the case of a new request with amended claims, one well-established criterion is whether the claims are likely to overcome the objection or objections in response to which the request has been filed.

[16.3] While the exercise of its discretion by the Board in this particular case is a substantive issue with which the EBA cannot interfere in petition proceedings (see for example R 9/11 [3.2.1]), it seems highly probable that in arriving at the decision under review the BoA did use the criterion of whether the claims were likely to overcome the objection in question. That is not only suggested by the reference in the respondent’s letter of 12 November 2012 to a detailed discussion on admissibility which ranged across clarity, support, added matter, novelty and inventive step […], but is endorsed by the petitioner itself which referred to that reference as an acknowledgment that a substantial amount of the argument at the OPs was about the admissibility of the new requests […], and is also confirmed by the decision under review which states in terms […] that the new requests were inadmissible because they were not clear within the meaning of A 84.

[17] For the reasons in points 9 to 16 above, and apart from the fact that the petition itself shows that the petitioner had an opportunity to comment on the admissibility of the new requests, the EBA cannot accept that the petitioner’s arguments demonstrate any violation of A 113. In further support of that conclusion the EBA notes, as it did in its preliminary opinion, that the petition offers no explanation as to why, when the petitioner had the opportunity to discuss admissibility of the new requests before the BoA, it made no reference to the arguments on which it now relies to show a violation of A 113. If, when it filed the new requests, the petitioner believed that the requests were automatically admissible and that the Board had no alternative but to proceed directly to a consideration of their allowability, it is to say the least strange that it did not make that submission to the BoA. The petitioner’s only answer to this is that it did not do so because of the chairman’s comment, or more precisely the interpretation the petitioner placed upon that comment. However, the petitioner and its representative were responsible for the conduct of their case and it was for them to submit the necessary arguments to support their case on their own initiative and at the appropriate time (see R 2/08 [8.5, 9.10] and R 13/11 [18]). That they did not say to the BoA when, as the case they now make in the petition proceedings makes clear, they had the opportunity to do so, that the Board was obliged to admit the new requests can only mean either that they did not at the time believe in (or perhaps even think of) those arguments and/or that they chose not to make the submission.

[18] All its previous arguments being wholly unconvincing, the only remaining argument deployed by the petitioner to support a denial of opportunity to comment is that the petitioner was surprised by the decision not to admit its new requests because of the remark by the chairman of the Board that the requests appeared to be clear. The petitioner submitted, though not in the petition, that it took that remark as a ruling on admissibility and that the legal basis for that is Article 15(4) RPBA […]. The EBA also finds this argument unconvincing for three reasons – the very nature of the remark, the purported legal basis of the argument, and its own jurisprudence on “surprise” arguments.

[19.1] As regards the nature of the chairman’s remark, the EBA notes that it was no more than a remark by one member of the BoA during the discussion on the admissibility of the petitioner’s new requests. Prior to the petition – in the petitioner’s request to amend the minutes of the OPs – and in the declarations filed with the petition, it is only referred to as an “indication” or “expression” by just the chairman. In the petition however it is elevated to the status of an indication or opinion of the whole Board, for example: “the positive indication given by the Board” […], “the Board acknowledges that the positive opinion was given” […] and “the Board gave an indication” […], and this is used to suggest there was a “sudden change of opinion of the Board” […].

The petitioner then proceeds to suggest that it was mislead by alleging that “correctly relying on this positive indication given by the Board, [it] had no doubts that at least admissibility of the new requests was accepted” […] and that it “could reasonably assume that any further submissions or requests were superfluous and thus refrained, in order to behave according to indications of the Board and to avoid an unnecessary lengthening of the OPs, from presenting further arguments” […].

At the OPs before the EBA, the petitioner went still further […] and called the remark a “ruling” on the admissibility of the requests which meant that the clarity objection had been overcome. It also submitted that it was “made to rely” on the chairman’s indication […] as if it was compelled to accept it without question.

[19.2] The EBA sees no merit in such re-interpretation of a remark made by one member of the Board into first an opinion of the whole Board and subsequently into a ruling of the Board. The petitioner and its representatives must have known at the time that the remark was that of one member only and any additional significance they gave it had nothing to do with the proceedings. To seek subsequently to elevate the remark into something more in order to support a petition for review is not merely unconvincing but implausible. The submission that the chairman’s remark prompted the petitioner’s representative to take instructions from the petitioner on a possible remittal of the case to the OD carries no weight - the fact that the petitioner or its representative chose to take any steps on the basis of their inherently implausible interpretation of the remark cannot make that interpretation any less implausible.

[19.3] The very wording of the petitioner’s argument reveals its weakness. It claims that the positive indication of the chairman’s remark meant there was no expectation that the Board would conclude that the new requests would not be admitted so no objection could have been raised by the petitioner […]. Such an argument is logically flawed: the expectation of one (desired) result does not preclude arguing against another (undesired) result.

The petitioner’s various submissions on this theme all suffer from this “would/could” weakness, for example:

“Based on the Board’s positive indication, the petitioner could reasonably assume that any further submissions or requests were superfluous and thus it refrained from presenting further arguments” […];

“the chairman had given an indication that the new requests were clear so the petitioner had no reason to make and was not induced to make further submissions” […]; and

“No objection was raised under R 106 because, on the basis of that positive indication, there was no reason to expect that a procedural violation would occur” […].

It is apparent that the petitioner conducted its case in reliance on its own assumptions. It was of course entitled to do that – as already observed (see point [17] above), the petitioner and its representative were responsible for the conduct of their case and it was for them to submit the necessary arguments to support their case on their own initiative and at the appropriate time (see R 2/08 [8.5, 9.10]). It follows that only the petitioner and its representative can be responsible if such assumptions prove incorrect and the petition for review procedure is not a remedy for the consequences.

[20] As regards the legal basis for the argument, the EBA observes first that the petitioner did ultimately acknowledge the weakness of the argument when, in reply to a question asked during the OPs, it agreed that the chairman of the Board had not actually said that the new requests were admissible. It thus became plain beyond doubt that the petitioner’s argument was based only on the interpretation it had chosen to give to the remark.

The EBA also has no hesitation in dismissing the petitioner’s argument that Article 15(4) RPBA has the effect that, if a chairman gives an indication, a party has to rely on it. Article 15(4) RPBA reads:

“The Chairman presides over the OPs and ensures their fair, orderly and efficient conduct.”

Those words simply cannot be interpreted to mean that a remark or indication by the chairman has to be relied on by a party without question, let alone that it has the status of a ruling or the removal of a previous objection. If the chairman could make remarks with any such effect during OPs and before the parties have concluded their submissions, that would in itself amount to a violation of A 113(1). It would also contradict Articles 15(5), 15(6) and 19(1) RPBA.

[21] Lastly the EBA observes that this line of argument is contrary to its established case law which has consistently held that, while surprise may be an understandable subjective reaction of a party which expects to but does not succeed, it cannot affect an objective review of the decision - so if the petitioner knew the issues which might be raised and had an opportunity to comment thereon, its subsequent surprise is of no relevance (see R 12/09 [13]; R 15/10 [11] ; R 13/11 [18]; and in particular R 6/11 [5.3], in which as in the present case the petitioner’s belief that the Board would decide in its favour was held to be immaterial to the fulfillment of requirements pursuant to A 113(1)).

[22] The petition does not show that any denial of opportunity to comment occurred and thus no violation of A 113 has been established. Therefore it is not necessary to consider the petitioner’s arguments that the alleged violation was fundamental. It follows from the absence of any violation of A 113 that the petition is clearly unallowable.

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

The file wrapper can be found here.

T 1981/12 – Possibly Unfair

This is a noteworthy decision on search-related matters.

The application under consideration was filed as a PCT application with the USPTO in 2005. In the international search report (ISR) and the international examination report issued by USPTO the claims were variously considered to lack either novelty or inventive step; however, no objection of lack of unity was raised, so that all claims were searched.

The application then entered the European phase with an amended set of claims.

In the supplementary European search report (ESR) dated 8 February 2011 the applicant was informed that the application lacked unity a posteriori in the light of D1. Only the first invention (corresponding to claims 1-4, 7, and 12) had been searched. The applicant was invited to limit its application to that subject-matter.

The applicant amended its claim 1 by combining claim 1 and 6 as filed on entry into the European phase. It argued that there was no lack of unity and that all claims had been searched as part of the ISR, which is all that was required under R 164(2).

After some discussion the Examining Division (ED) refused the application.

The applicant filed an appeal. It argued that the ED had committed two substantial procedural violations: the decision was not sufficiently reasoned and there was no reference to its submissions based on the amendment to R 164.

The decision is somewhat lengthy. If you wish to content yourself with the headnotes provided by the Board, here they are:

1. Claims whose subject matter has not been covered by a search report drawn up by the EPO will not be examined by the EPO for novelty or inventive step (points [5.3-4])

2. Where subject matter is covered by a search report drawn up by an ISA other than the EPO in the international phase but is not covered by the supplementary search report drawn up by the EPO in the European phase in the application of R 164(1), the subject matter is not to be regarded as covered by a search report for the purposes of R 164(2) (points [6-8]).

3. Where on entering the European phase the application documents are considered by the EPO not to meet the requirements of unity, with the result that a supplementary ESR is drawn up on only those parts of the application which relate to the invention first mentioned in the claims (R 164(1)), the applicant is not entitled to have a further search report drawn up to cover the other invention or inventions (point [9]).

If you want the whole thing (and I think you should), here we go:

Extent of the supplementary European search

[3.1] Before turning to the main issue in the appeal it is convenient to deal with one of the appellant’s subsidiary arguments. This was that the Guidelines for Examination were not followed by the EPO when conducting the search. It was argued that even if the claims were non-unitary, all claims should nevertheless have been searched since the Guidelines provided that:

“Although lack of unity may arise a posteriori as well as a priori, it should be remembered that lack of unity is not a ground for revocation in later proceedings. Therefore, although the objection should certainly be made and amendment insisted upon in clear cases, it should neither be raised nor persisted in on the basis of a narrow, literal or academic approach. This is particularly so where the possible lack of unity does not necessitate a further search. …”.

(Citing the earlier version of the Guidelines at C-III, 7.7; for the current version, see the Guidelines, B-VII, 2.2).

[3.2] However, the actions of the Search Division (SD) are not subject to appeal: see A 106(1) and T 2495/11 [2.1-2]. If an applicant considers that the view taken by the SD on lack of unity is wrong and the ED takes the same view as the SD, an applicant can challenge this, if necessary by way of an appeal. If this challenge succeeds, then a further search will be carried out without a further search fee being charged.  See G 2/92 [2], J 3/09 [3.5.2] and T 2495/11 [2.1-2]. In the present case, however, the ED’s view on lack of unity was not challenged before either the ED or the Board. The argument is therefore rejected.

The R 164(2) point: introduction

[4.1] It is doubtful that R 137(5) could be an appropriate basis for refusing an application based on these requests.

The rule provides:

“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. …”.

[4.2] It has been pointed out that R 137(5) (previously R 86(4) EPC 1973) only has the status of an administrative provision in the context of search and grant procedures: see T 708/00 [6]. An amendment which does not comply with the rule is therefore inadmissible: T 442/95 [6]. If the applicant’s only request for grant is based on such amended claims there will be no admissible request for grant and the application will be refused.

[4.3] More to the point, however, is the fact that in the present case the amended claims, even if they may relate to “unsearched subject-matter” (a matter hotly disputed by the appellant), had not been combined with the originally claimed invention to form a single general inventive concept: they were part of the original claimed subject matter on entry into the European phase.

[4.4] The underlying purpose of the rule is explained in CA/12/94 Rev. 1 of 17 October 1994, “Amendment of the EPC, the Implementing Regulations (IR) and the Rules relating to Fees”, pages 16 and 17, and the Notice of 1 June 1995 published in OJ EPO 1995, pages 409 and particularly 420, 421 concerning the introduction of the R 86(4) EPC 1973 (which subsequently became R 137(5)). These documents and also subsequent decisions of the Boards of Appeal point out that the purpose of the rule is to stop applicants switching to unsearched subject matter in the reply to the first communication from the examiner (thereby getting several searches and examinations for the price of one). The rule is thus intended to prevent amendments of the application which circumvent the principle that a search fee must always be paid for an invention presented for examination (T 274/03 [4]). It therefore provides the means to stop applicants, in reply to the first communication, dropping existing claims, replacing them by switching to unsearched and non-unitary subject-matter extracted from the description, i.e., claiming different subject-matter in sequence rather than simultaneously (T 274/03 [4], T 915/03 [3], T 1285/11 [2]). The rule therefore does not apply where a lack of unity arises within a group of simultaneously claimed inventions (T 915/03 [3]).

[4.5] Of course these statements must be read in the context of the facts of the particular cases. Nevertheless, in the present case the amended claims did not take matter from the description but rather were based on the claims as filed on entry into the European phase. In the words of T 264/09 [4.2], the claims have not been amended “such that” they relate to unsearched subject-matter which does not combine with the originally claimed invention to form a single general inventive concept. Further it is part of the appellant’s complaint that it was not given the opportunity to pay further search fees following the SD’s search report. Indeed, the problem does not arise as the result of the amendments which the applicant made after entry into the European phase but because of an objection of lack of unity which was first raised at a point when, if the ED is correct, the appellant no longer had the opportunity to have non-unitary subject matter searched and where, in the further prosecution of the application, the appellant no longer had the opportunity to choose which inventions to pursue. It could only pursue the invention first mentioned in the claims filed on entry into the European phase. All other inventions could only be pursued by way of one or more divisional applications.

[4.6] The same problem would arise on a simplified version of the facts of the present case where, for example, on entry into the European phase, two non-unitary inventions were claimed and in examination the applicant wished to restrict the application to the second and unsearched invention claimed.

[4.7] The Board also considers that R 164(2), however interpreted, cannot by itself be a basis for refusal of the application (and indeed the ED did not base its refusal on the rule). The rule is merely a procedural provision which gives an applicant the opportunity, by amending the claims, to deal with particular objections raised by the ED; it does not expressly purport to deal with the requirements of search or patentability. The rule does not say (and does not need to say) what the consequence will be of an applicant not taking the opportunity to restrict the claims. In this respect the rule appears to operate in a different way from R 64(1), under which if the applicant does not pay further search fees and the SD’s view on lack of unity is upheld by the ED, unsearched subject matter may not be pursued in that application: see G 2/02 [this should read G 2/92] and the further explanation of the operation of the rule in T 631/97. Nevertheless, if the applicant does nothing and the objection of lack of unity is upheld the consequence will be that the application will be refused under A 82.

[4.8] It appears to the Board that the correct approach is that if the claims of the relevant request are non-unitary, and the applicant declines to limit the claims to a single invention, then the application should simply be refused under A 97(2) on the grounds that the claims of the request do not meet the requirements of the EPC, namely A 82.

In this light the essence of the appellant’s complaint is that by virtue of R 164(2) the ED should have regarded all subject matter covered by the ISR as searched. While it may have been correct, given the ED’s view on unity, for the appellant to have been invited to limit its claims, the appellant argues that such invitation should not have been limited to the claims relating to the single invention covered by the supplementary ESR. The appellant says that it should have been invited, and was entitled to choose which invention it wanted to pursue in the examination proceedings, including an invention covered only by the US Patent Office’s search in the international phase.

The context of R 164(2)

[5.1] Before dealing with the appellant’s interpretation of R 164(2), some points of general importance need to be made regarding the context in which the rule operates.

[5.2] An application for a European patent will be refused only if the application or the invention to which it relates does not meet the requirements of the EPC (A 97(2)). Generally under the EPC, it is not expressed to be a ground for refusal of an application that claims have not been searched. In the present context, the ground for refusal of an application will usually be lack of unity (see point [4.8], above) or, alternatively, that there is no admissible request for grant of the patent (see point [4.2], above).

[5.3] Nevertheless it is a fundamental assumption under the EPC system that examination of an application will only be conducted on the basis of claims which have been appropriately searched (i.e., with due regard to the description and any drawings: A 92). Without an appropriate search the Office does not have the necessary materials to determine whether the application meets the requirements of novelty and inventive step. As it is put in the current version of the Guidelines for Examination, Part B-II, 2:

“The objective of the search is to discover the state of the art which is relevant for the purpose of determining whether, and if so to what extent, the claimed invention for which protection is sought is new and involves an inventive step.”

In G 2/92 [2], the Enlarged Board said:

“… the invention which is to be examined for patentability must be an invention in respect of which a search fee has been paid prior to the drawing up the ESR. … Part IV of the EPC … envisages that an application progresses after filing from the SD to the ED…. An object of R 46 [EPC 1973] is to implement this procedure by ensuring that an appropriate extent of search is completed in respect of each individual application before each application is examined by the ED. …

… the payment by the applicant of further search fees in respect of each further invention ensures that after receipt of the ESR, the applicant may put forward in the claims of that application, by way of amendment under R 86(2), whichever further invention he chooses for subsequent examination by the ED, provided the respective fee has been paid so that the ESR has been drawn up with reference to such invention.” (emphasis added by the Board).

The general principle was underlined in T 1242/04 [8.2]):

“The search is an essential element of the grant procedure, being designed to identify prior art relevant to the application. The intention is to make it possible to determine, on the basis of the documents mentioned in the search report, whether and to what extent the invention is patentable (see R 44(1)). Knowledge of the prior art forms the basis for examination of the application by the ED. It is also important for applicants, giving them a basis for deciding whether to continue prosecuting their applications and have them examined. Lastly, it is also important for the public and especially for competitors, enabling them to gain an idea of the scope of any protection that might be granted. For that reason the legislator has also stipulated that the results of the duly performed search must be published together with the European patent application eighteen months after the date of filing or priority (see A 93(2)).”

There are narrow exceptions to this principle (see e.g. T 1242/04) but these are not relevant for present purposes.

[5.4] In the case of a Euro-PCT application, the ISR under Article 18 PCT takes the place of the ESR (A 153(6)). Nevertheless it remains a fundamental principle that a supplementary ESR must generally be drawn up in respect of such an application (A 153(7)). Only where the Administrative Council (AC) has so decided may the supplementary ESR be dispensed with (A 153(7)). Currently, the decision of the AC of 28 October 2009, CA/D 11/09 (OJ EPO 2009, 594) provides for such an exception where the ISR or a supplementary ISR was drawn up by the EPO. Historically there were other exceptions, for example where the ISR was drawn up by the Austrian, Swedish or Spanish Patent Offices: see the Decision of the AC of 17 May 1979 (OJ EPO 1979, 422). These provisions can be traced back to A 177 EPC 1973 and the Decision of the AC of 21 December 1978, CA/D 18/78 (OJ EPO 1979, 4 & 50). There are a number of historical reasons for this dilution of the principle in A 153(6), including no doubt that other ISAs do not necessarily search in all the three languages in which the EPO searches. See also “The Granting of European Patents” by M. Van Empel (Leyden: Sijthoff, 1975), p.289:

“… it is in fact hard to predict the quality of the ISRs which will be drawn up by the various International Searching Authorities (ISAs). This quality may vary from one ISA to another, and even within the same authority it may vary according to time and to area of technology. … PCT Member States are, therefore, left free to have the ISR checked on the national level once again and have it supplemented where necessary or desirable.”

The travaux préparatoires to the EPC show that it was the hope that a supplementary national search would only be necessary during the initial stages of the PCT. See, e.g., BR/12 e/69, paragraph 69, BR/218/72, paragraphs 160, 162, 165, However, this hope has not yet been fulfilled.

The interpretation of R 164

[6.1] The rule is contained in Part IX of the IR, implementing Part X of the EPC, which concerns international applications under the PCT, in particular those for which the EPO is the designated or elected office (Euro-PCT applications).

[6.2] The current version of R 164(1) states:

“(1) Where the EPO considers that the application documents which are to serve as the basis for the supplementary European search do not meet the requirements for unity of invention, a supplementary ESR shall be drawn up on those parts of the application which relate to the invention, or the group of inventions within the meaning of A 82, first mentioned in the claims.”

The rule is obviously not concerned with Euro-PCT applications for which no supplementary ESR has to be drawn up, i.e., with cases where the EPO was the ISA (see point [5.4], above). For those applications for which a supplementary ESR has to be drawn up, the rule operates independently of and additionally to whatever may have happened as regards unity of invention in the international phase pursuant to Article 17(3)(a) and Rule 40 PCT. In the present case a supplementary ESR was drawn up in accordance with the rule.

[6.3] R 164(2) in its current version states:

“(2) 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 ISR or, as the case may be, by the supplementary ISR or supplementary ESR, it shall invite the applicant to limit the application to one invention covered by the ISR, the supplementary ISR or the supplementary ESR.”

[6.4] The drafting of R 164(2) is not ideal. To understand it, it is easier to start form the version of the rule as originally enacted (Decision of the AC of 7 December 2006: OJ EPO 2007, Special Edition No. 1, p. 89). This provided that:

“(2) 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 ISR or, as the case may be, by the supplementary search report, it shall invite the applicant to limit the application to one invention covered by the ISR or the supplementary ESR.”

It is not in any dispute that the expression “the supplementary search report” means “the supplementary ESR”. This is made explicit in the current version of the rule.

[6.5] Part of the difficulty is that the rule attempts at one and the same time to deal with three different and potentially overlapping situations arising in examination proceedings. Thus it deals with cases where the ED finds that:

(a) The application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention;

or

(b) Protection is sought for an invention not covered by the ISR;

or, as the case may be,

(c) Protection is sought for an invention not covered by the supplementary ESR.

Thus, unlike R 164(1), the rule covers not only the case where there is a supplementary ESR (as in the present case, because the EPO was not the ISA) but also the case where there is no such report (because the EPO was the ISA). The expression “as the case may be” appears to be intended to deal with these two alternative possibilities; the Board disagrees with the appellant’s submission that it can be regarded as extraneous.

When any of these different situations arises the ED is to invite the applicant to limit the application to one invention. Obviously the rule must be read applying a certain amount of common sense. Thus, if protection is sought for an invention not covered by the ISR, but which was covered by the supplementary ESR (because, for example, the SD of the EPO takes a different view on unity from the ISA) it makes no sense to read the rule as requiring the application to be limited to one invention covered by the ISR.

[6.6] The appellant was not very specific as to precisely how the rule should be applied in the present case. One way of putting it would be that the application documents for the European grant procedure were found not to meet the requirements of unity the applicant should have been invited to limit the application to one invention covered either by the ISR or the supplementary ESR; the second possible way is that given that protection was being sought for an invention not covered by the supplementary ESR, the applicant should have been invited to limit the application to one invention covered either by the ISR or the supplementary ESR.

[6.7] The Board can accept that linguistically these are possible interpretations of the rule. However, the Board does not consider that either is correct. It would mean that in both cases the rule had introduced an exception to the principle, discussed in point [5.4] above, that an application which has not been appropriately searched by the EPO will not be examined by the EPO. Such an exception could only have been introduced by the AC in exercise of its powers under A 153(7). In the exercise of such powers the AC is normally careful to recite the power itself, e.g., “Having regard to the EPC, and in particular A 153(7) thereof …”. See, e.g., CA/D 11/09 (OJ EPO 2009, 594), referred to in point [5.4], above.

Of course the AC also has power under A 33(1)(c) to amend the IR, and A 164(2) was part of the amendments to the IR made by the AC on 7 December 2006 in exercise of that power. However, in making these amendments the AC was again careful to recite the power under which the amendments were being made, i.e. “Having regard to the EPC, and in particular A 33(1)(b) thereof …”. See Decision CA/D 20/09 (OJ EPO 2007, Special Edition No. 1, page 89). This decision makes no reference to the power under A 153(7) and, given the significance of the power, it would be surprising, to say the least, if the AC were to have purported to have exercised it, sub silentio and without consultation. The Board has already noted that R 164(2) is merely procedural in nature (see point [4.7], above) and again it would be surprising if its effect was to alter what is to be regarded as searched subject matter, an issue which goes to the ability of the EPO to examine an application for patentable subject matter.

[6.8] The Board considers that applying common sense the correct interpretation of the rule, taking the three different (and potentially overlapping) situations referred to in point [6.5] above in turn, is that:

(a) If the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, the applicant is to be invited, in the case where there is no supplementary ESR, to limit the application to one invention covered by the ISR;

If, on the other hand, in such a case there is also a supplementary ESR, the applicant is to be invited to limit the application to one invention covered by that report.

(b) If, where there is no supplementary ESR, protection is sought for an invention not covered by the ISR, the applicant is to be invited to limit the application to one invention covered by that report.

(c) If, where there is a supplementary ESR, protection is sought for an invention not covered by that report, the applicant is to be invited to limit the application to one invention covered by that report.

This interpretation maintains the principle that an application which has not been appropriately searched by the EPO will not be examined by the EPO.

A 164(2): the travaux préparatoires

[7.1] The argument of the appellant is not merely that its interpretation of the rule is the natural and therefore the correct reading of the rule, but also that the travaux préparatoires to the rule lead one to the same conclusion.

[7.2] To understand the travaux préparatoires and the effect of R 164 fully it is first necessary to consider the position as it was before the EPC 2000 came into force.

[7.3] So far as concerned a Euro-direct application, R 46(1) EPC 1973 (equivalent to R 64(1)) provided:

“If the SD considers that the European patent application does not comply with the requirement of unity of invention, it shall draw up a partial ESR on those parts of the European patent application which relate to the invention, or the group of inventions within the meaning of A 82, first mentioned in the claims. It shall inform the applicant that if the ESR is to cover the other inventions, a further search fee must be paid, for each invention involved, within a period to be fixed by the SD which must not be shorter than two weeks and must not exceed six weeks. The SD shall draw up the ESR for those parts of the European patent application which relate to inventions in respect of which search fees have been paid.”

[7.4] As regards Euro-PCT applications, there were various possibilities on entering the European phase. For the purposes of the present case it is only necessary to consider two of them:

(a) If no objection of lack of unity had been raised in the international phase but, a supplementary European search being required, such an objection was raised by the SD on entering the European phase, R 46(1) EPC 1973 would have been applied. See the Guidelines for Examination, June 2005 version, C-III, 7.11.2. Thus a search report would have been drawn up on those parts of the application which related to the invention first mentioned in the claims and the applicant would have been told, in effect, that if further search fees were paid the other inventions would also be searched. (Indeed this was generally the position where a supplementary ESR was required, whatever had happened in the international phase).

(b) Where lack of unity was raised in the international phase by the ISA, the applicant would have had the opportunity to pay further search fees and have all matter searched there (Article 17(3)(a) PCT). If the applicant did not do so, then, if no supplementary European search was required, the position was governed by R 112 EPC 1973:

“If only a part of the international application has been searched by the ISA because that Authority considered that the application did not comply with the requirement of unity of invention, and the applicant did not pay all additional fees according to Article 17, paragraph 3(a), of the Cooperation Treaty within the prescribed time limit, the EPO shall consider whether the application complies with the requirement of unity of invention. If the EPO considers that this is not the case, it shall inform the applicant that a ESR can be obtained in respect of those parts of the international application which have not been searched if a search fee is paid for each invention involved … The SD shall draw up a ESR for those parts of the international application which relate to inventions in respect of which search fees have been paid. R 46, paragraph 2, shall apply mutatis mutandis.”

Although the rule did not expressly say so, it clearly only applied in a case where no supplementary search report was required (for example because the EPO was the ISA) and this is how the rule was interpreted by the Office: see the Guidelines for Examination, June 2005 version, Part E-IX, 5.7. The rule was needed since otherwise in these circumstances there was no route whereby non-searched subject matter could be searched on entering the European phase.

[7.5] R 112 EPC 1973 was considered not to operate very satisfactorily. Some of these reasons why are set out in the travaux préparatoires to the original version of the rule, the only relevant document of which the Board is aware being CA/PL 17/06 (See OJ EPO 2007, Special Edition 5, page 256). This states as follows:

“1. Many practical problems have arisen within the framework of current R 112 EPC. The rule does not address all possible scenarios, e.g. not the situation where non-unity is only introduced by amendments filed on entry into the European phase. Also the case where after amendment on entry into the European phase the application is unitary, but nevertheless relates to an invention not searched, is not covered. Especially in the situation where there is no supplementary [European] search and R 112 has to be applied by the ED, there is no straightforward procedure. Applicants consider a R 112 communication as a first communication by the ED and respond by e.g. contesting the findings or filing further amendments. This causes considerable delays.” (word in square brackets added by the Board)

[7.6] While this statement refers to the problems with R 112 EPC 1973, it should be noted that R 164 is in fact concerned with a much broader range of circumstances (see points [6.2] and [6.5], above). As regards the new R 164, CA/PL 17/06 continues:

“2. The EPO believes that the principle should be that examination should only be carried out on inventions covered either by the ISR or by the supplementary [European] search report, in line with G 2/92. Under the proposal, the procedure will be simplified and the opportunity to have multiple inventions searched within the framework of one application will be limited to the international phase. On entry into the European phase, non-unitary subject matter should be deleted.

3. The proposal does not involve any loss of rights for the applicant. The result is just that the applicant will have to use the appropriate way of having any further inventions searched and examined by filing divisional applications. This will bring the Euro-PCT procedure in line with the Euro-direct procedure.” (word in square brackets added by the Board)

[7.7] As with R 164(2) itself, the statement in point 2 (“examination should only be carried out on inventions covered either by the ISR or by the supplementary [European] search report”) is dealing with two situations at the same time, i.e., both with the case where there is a supplementary ESR and where there is not. The Board does not consider that it is possible to obtain from this very compressed form of wording any very clear guidance as to the construction of the rule in addition to what can be understood from reading the rule by itself. The rule is already expressed in a compressed form and this further summary does not take the matter any further.

[7.8] As to the reference in CA/PL 17/06 to G 2/92, this seems inappropriate since G 2/92 was not concerned with Euro-PCT applications or thus with international or supplementary ESRs but only with the search in European proceedings. In this the Board agrees with the statement in Singer/Stauder (Teschemacher) “The EPC”, Sixth Edition, A 82, point 31, n.73.

[7.9] To the extent that the statement in CA/PL 17/06 can be taken as confirming that examination should only be carried out in respect of inventions which have been the subject of a search by the EPO, whether the international search or the supplementary European search, this is at least consistent with G 2/92.

[7.10] The appellant relies heavily on the statement in CA/PL 17/06: “The EPO believes that the principle should be that examination should only be carried out on inventions covered either by the ISR or by the supplementary [European] search report …” (emphasis added by the appellant). The appellant argues that when compared with the wording of the rule itself (“it shall invite the applicant to limit the application to one invention covered by the ISR or the supplementary [European] search report”) it is made clear that the invitation must be made in respect of either report, so that an applicant can in effect choose which search is to be the relevant one. The Board does not agree. The additional word “either” in CA/PL 17/06 does not add anything to the meaning. Certainly, to the extent that the text of R 164(2) is ambiguous, the word does not it makes it unambiguous in the sense for which the appellant argues.

[7.11] The appellant also argues that since CA/PL 17/06 states that the new rule will not involve any loss of rights (as compared to those under EPC 1973) the appellant must be permitted to pursue claims covered by the ISR. However, this statement in CA/PL 17/06 is immediately followed by the explanation of what is to be understood by it: an applicant will be able to have any further inventions searched and examined by filing one or more divisional applications.

The Board accepts that the rule change means that the appellant’s position is procedurally less advantageous than it would have been under the EPC 1973 (see points [7.3] and [7.4], above). There has therefore been a loss of procedural rights and such loss may have potentially serious financial consequences for applicants. Nevertheless the framers of the rule and of CA/PL 17/06 appear to have considered that provided there was no loss of the right to have separate inventions searched and examined, albeit only by way of a divisional application, this was sufficient to avoid any loss of rights. CA/PL 17/06 does not promise any more than this, and certainly not that an applicant’s procedural rights will remain the same as before.

[7.12] The appellant further relies on the statement in CA/PL 17/06 that the new rule will bring “the Euro-PCT procedure in line with the Euro-direct procedure” and argues that the implication is that an applicant should have a single opportunity to pay additional search fees for a Euro-PCT application, i.e., during the international search phase. While the Board can accept that this statement is puzzling, the fact is that the Euro-PCT procedure is not the same as the Euro-direct procedure. These words must also be read together with the preceding statement that there will be no loss of rights because of the possibility of filing divisional applications.

[7.13] The appellant also relies on the statement in CA/PL 17/06 that the practice under the new rule will be in line with G 2/92. It is argued that effect of the G 2/92 is that in order to be barred from pursuing subject matter that has not been searched, an applicant should have failed to pay a relevant search fee. If an applicant has not been asked or had the opportunity to pay a search fee in respect of particular subject matter then it cannot be regarded as unsearched. This is to turn G 2/92 on its head. G 2/92 was concerned with the case where an applicant has been invited by the SD to pay further search fees under R 46(1) EPC 1973 (now R 64(1)) but had declined to do so. In these circumstances the Enlarged Board decided that the applicant could not pursue subject matter in respect of which no search fees had been paid and must file a divisional application if protection for such subject matter was wanted (see the Headnote). It does not follow from this that subject matter in respect of which no search fees have been requested can somehow be regarded as searched. Whether an applicant should be given the opportunity to pay further search fees is a separate issue (see point [9], below).

The amendment to R 164(2)

[8.1] The appellant further relies on the amendment to R 164(2) which came into effect on 1 April 2010. This amendment was one of a number of changes to the EPC following the introduction of the availability from the EPO of supplementary ISRs (“SISRs”) pursuant to Rule 45bis PCT. The changes enable applicants to request a search during the international phase from as many participating ISAs as they wish so as to minimise the risk of new prior art being uncovered after entry into the national phase. It enables them, for example, to take account of particular expertise certain ISAs may have in certain languages: see CA/56/09, point 4. As part of the implementation of the change, the AC decided, again with specific reference to its powers under A 153(7) (see point 6.7, above), that a supplementary ESR should be dispensed with not only where the ISR has been drawn up by the EPO but also where an SISR has been drawn up by the EPO. See Decision CA/D 11/09 of 28 October 2009 (OJ EPO 2009, 594). The reason is self-evident: as with an ISR, where the EPO has drawn up an SISR such a search is sufficient for the purposes of examination in the European phase.

[8.2] As part of these changes, the text of R 164(2) was amended as set out at point 6.3, above: see the decision of the AC CA/D 20/09 of 27 October 2009 (OJ EPO 2009, 582). The amendment was necessary because the supplementary ESR was now to be dispensed with in the circumstances described above: see CA/166/09, point 5. The expression “as the case may be” in the Board’s view again reflects the fact that now there may or may not be either an SISR or an supplementary ESR; it will depend on the circumstances.

[8.3] It is argued by the appellant that if the effect of the original wording of R 164(2) is that the supplementary ESR had the ability to supersede the ISR, then it must be the case that any SISR would supersede the ISR, something which cannot be correct, and would require the EPO to consider any SISR ahead of even a European ISR. The wording “as the case may be” can only mean that subsequent search reports may be taken into consideration in cases where they exist and not they supersede the ISR in some way.

[8.4] The Board does not agree. Although the amendment makes the rule yet more complicated since it now deals with the further possibility of there being an SISR drawn up by the EPO, it cannot be taken to have made a fundamental departure from the way in which the previous version of the rule operated or to affect the underlying general principle that in the European phase only applications which have been appropriately searched by the EPO will be examined for patentability. As explained above, the rule change was made in the context of the exercise of the AC’s powers under A 153(7), i.e., dispensing with the need for a supplementary European search where an international search (of whichever kind) has been drawn up by the EPO.

[8.5] Indeed, the travaux préparatoires to the rule change not only confirm this but also confirm the Board’s interpretation of the original rule. Thus the proposal for the change in the rule (CA/166/09) states, at point 8:

“In the case of a lack of unity of invention, an SISR will only be established for the invention first mentioned in the claims (Rule 45bis.6(a)(i) PCT). There is no opportunity for the applicant to have further inventions searched against the payment of additional search fees. In line with the principle that the EPO will only examine inventions it has searched, a consequential amendment to R 164(2) is necessary, obliging the applicant to limit his application to the invention covered by the SISR.” (emphasis added by the Board)

Indeed, on the basis of the appellant’s arguments, it is hard to understand it was said that the obligation was to limit the application to the invention covered by the SISR, rather than to the ISR or the SISR.

[8.6] Generally, the Board cannot agree with those aspects of the appellant’s arguments here and elsewhere […] which are concerned with whether the ISR should be “ignored”, with further proceedings to be based only the supplementary ESR, or whether the supplementary search report “supersedes” the ISR or an SISR. Where a supplementary ESR is required, all search reports are potentially equally relevant for the purposes of examination in the European phase.

A right to a further search

[9.1] The appellant argues in the alternative that if its construction of R 164(1) is wrong then it must be entitled to a invitation from the EPO to pay a further search fee and thus to have the EPO search the claims not covered by the (first) supplementary ESR. Otherwise, it is argued, it will have suffered a loss of rights, contrary to what is said in CA/PL 17/06. This right to a further search is said to be available under R 64(1).

[9.2] The Board has already noted that this statement about no loss of rights was made in the context of it also being said that an applicant can always pursue unsearched matter by way of one or more divisional applications.

[9.3] Additional searches may sometimes be necessary during examination or opposition proceedings (see the Guidelines for Examination B-II, 4.2) but R 164(1) has ruled out the possibility of such further search in the present circumstances, in contrast to the position under R 64(1). CA/PL 17/06 makes the position clear when it states, in point 2:

“Under the proposal, the procedure will be simplified and the opportunity to have multiple inventions searched within the framework of one application will be limited to the international phase. On entry into the European phase, non-unitary subject matter should be deleted.” (emphasis added by the Board)

The Board therefore rejects this argument.

R 164: possible conflict with the PCT and articles of the EPC

[10.1] The interpretation given to R 164 by the Board means that applicants who file a PCT application with an office other than the EPO may be at a procedural disadvantage in the European phase compared with applicants who file the international application with the EPO (and Euro-direct applicants). This disadvantage arises not out of R 164(2) but rather out of the application of R 164(1), which, the Board has held in point [9.3], above, prevents claims relating to more than one invention being searched in the European phase.

Although the appellant did not advance any such argument, the Board has nevertheless considered whether, in the appellant’s favour and having regard to A 164(2), R 164 is compatible with the EPC or the PCT.

[10.2] The following provisions appear relevant:

(a) A 150(2)

This article provides that international applications filed under the PCT may be the subject of proceedings before the EPO. In such proceedings, the provisions of the PCT and its Regulations are to be applied, supplemented by the provisions of the EPC. In case of conflict, the provisions of the PCT or its Regulations are to prevail. These provisions are the same as those in A 150(2) EPC 1973.

(b) A 153(2)

This article provides that an international application for which the EPO is a designated or elected Office, and which has been accorded an international date of filing (a Euro-PCT application), shall be equivalent to a regular European application. The article replaces A 150(3) EPC 1973, according to which an international application, for which the EPO acts as designated Office or elected Office, was to be deemed to be a European patent application. As part of the travaux préparatoires to A 153(2) it was explained that the new article “governed, in addition to Article 11(3) PCT, the conditions under which an international application has the effect of a European application, and clarifies the principle deriving from Article 150(3) EPC 1973.” (See OJ EPO, 2007, Special edition No. 4, and MR/2/00). Article 11(3) PCT provides that:

“Subject to A 64(4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) [which concern the essentially formal requirements for being accorded a filing date] and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.”

The principle deriving from A 150(3) EPC 1973 was explained in Singer/Stauder (Busse)”The EPC”, Third (English) Edition (2003), Volume 2, Article 150, note 20, as follows:

“The provision set out in [A 150(3) EPC 1973] is primarily directed towards the treatment of the international application after the end of the international phase. The application must then be examined for patentability on the same way as a European application.” (emphasis by the Board (sic)).

(c) A 153(5)

This article provides that a Euro-PCT application is to be treated as a European patent application and shall be considered as comprised in the state of the art under A 54, paragraph 3, if the conditions laid down in paragraph 3 or 4 and in the IR are fulfilled. This Article was new in the EPC 2000 and was explained in the travaux préparatoires (See OJ EPO, 2007, Special edition No. 4, page 186, and Preparatory Document MR/2/00) as follows:

“New A 153(5) clarifies the conditions for entry into the European phase, referring expressly to new paragraphs 3 and 4 and to the IR, where these conditions are specified (see R 159 EPC 2000). This is now combined with the stipulation, taken from A 158(1), second sentence, EPC 1973, that a Euro-PCT application shall only be considered as comprised in the state of the art under A 54(3) EPC if the conditions in question are fulfilled.”

In Visser “The Annotated EPC”, H. Tell, 20th Edition, (2012), the author states:

“Since the Travaux Préparatoires EPC 2000 state that this provision gives the conditions for entry into the European phase and those for considering a Euro-PCT application as a European prior right, it must be concluded that the word ‘treated’ refers to ‘processed’ and ‘examined’ in the sense of Article 23 PCT. Since this processing and examining is independent of the publication of the Euro-PCT dealt with by A 153(3) and (4), the reference to these two paragraphs in A 153(5) should pertain to the conditions for the European right only. The conditions for entry into the European phase are provided in R 159(1).”

In Singer/Stauder (Hesper) “The EPC”, Sixth Edition (2012), Volume 2, Article 153, notes 191 and 192, the following comment is made (the Board’s own translation of the German text):

“191. The meaning of the first part of A 153(5) “The Euro-PCT application shall be treated as a European patent application … if the conditions laid down in the IR are fulfilled” is unclear. In any event no meaning should be read into this passage which is not in accord with the principle embodied in Article 11(3) PCT in connection with A 153(2), whereby a Euro-PCT application [sic - an international application?] is equivalent to a Euro-PCT application as from the filing date of the international application.

192. The sense of this requirement can be better understood if it is borne in mind that no substantive alteration of the provisions in Art. 158 EPC 1973 was intended and that the reference to the IR replaces the two requirements for entry into the European phase laid down in Art. 158(2) EPC 1973 - the payment of the national fee and the filing of a translation according to Arts 22 and 39 PCT. As a result of its [i.e. Art. 158 EPC 1973’s] replacement by Art 158(2) EPC (2000) without any incorporation of further conditions into the IR, the special status and the original role of the actions envisaged by Arts 22 and 39 PCT for the commencement of the European phase is no longer apparent in the EPC system.” (Comment in italics by the Board.)

(d) Article 27(1) PCT

This article provides that:

“No national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and the Regulations.”

[10.3] The Board does not consider that it can be extracted from any of these provisions that all Euro-PCT applicants must have identical procedural rights, whether identical to those of all other Euro-PCT applicants or Euro-direct applicants. The provisions are concerned primarily to specify the formal requirements for a PCT application to be accepted into the national phase, to provide that the filing date of such an application is to be that of the international application and that such applications are all examined for patentability on the same basis. Whether this is done in the application itself or by way of divisional applications does not appear to be dictated by the PCT.

Legal texts

[11.1] So far as the Board is aware, no commentator has expressed an opinion differing from the above conclusions of the Board.

[11.2] In “Problems arising from R 164” by E. A. Kennington, epi information, 1/2009, p.6, the author anticipates precisely the present case and reaches the same conclusions, albeit adding that the rule is discriminatory and arbitrary in its effects and should be rewritten.

[11.3] Singer/Stauder (Teschemacher) “The EPC”, Sixth Edition, A 82, point 31 (the Board’s own translation):

“… if the SD considers that the application is non-unitary, then in accordance with R 164(1) it will draw up the supplementary ESR only in respect of the invention first mentioned in the claims. The consequences for the substantive examination are the same as for a partial search report under R 64 … While the possibility still exists, at least in the international phase, for applications for which the EPO is responsible as the ISA to obtain a search by the EPO of actual or alleged non-unitary parts through the payment of additional fees, for applications for which a supplementary search report is necessary, such a possibility is completely lost. The principal stated in the explanation to the new rule that a substantive examination should only be carried out in relation to inventions which are covered either by the ISR or the supplementary ESR, treats two different situations in the same way. The ISR drawn up by an ISA other than the EPO is neither actually nor legally a sufficient basis for proceedings before the EPO.”

Conclusions on main and first auxiliary requests

[12.1] 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. Although this is of little comfort to the appellant, the Board notes that there is a proposal to amend the rule on the agenda of the AC for October 2013, which would appear inter alia to deal with the problem which the appellant has encountered, even though the proposal is not directed primarily at the point in the present case: For the text of the new rule and explanation, see CA/PL 9/13, dated 30 August 2013.

[12.2] In conclusion, neither the main nor the first auxiliary request is allowable.

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