In this examination appeal case Board 3.3.09 had a lot to say on R 164 (a new version of which, as you know, will enter into force on November 1, 2014).
The PCT application had been filed with the Japanese Patent Office (JPO). The international search report (ISR) covered the subject-matter of all claims. On entering the European phase, however, the Search Division considered that the claims as filed (which were the same as those filed with the PCT application) were non-unitary. In accordance with R 164(1) EPC, the supplementary European search report (SESR) was therefore drawn up only for those parts of the application which related to the invention first mentioned in the claims, namely claims 1-4 (completely) and claim 13 (partially). The appellant was invited in the search report to restrict the application to the claims covered by the European search report and was informed that the excised matter might be made the subject of one or more divisional applications.
Following a communication under R 70(2) the appellant consented to the application being proceeded with and subsequently filed amended claims. These claims were not, however, suitably restricted: claims 1 to 4 as originally filed were deleted and the claims were restricted essentially to claims 5 to 13 as originally filed. The applicant argued that it was entitled to do this because these claims had been searched completely in the international phase: R 164(2) allowed an applicant to restrict its application to any invention covered either by the supplementary search report or the ISR.
The ED (ED) finally refused the application on the basis of this set of claims.
[2.1] The appeal is concerned with the proper interpretation and application of R 164(2). In its current version R 164 as a whole 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 SESR 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.
(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 SESR, it shall invite the applicant to limit the application to one invention covered by the ISR, the supplementary ISR or the SESR.”
[2.2] In the present case, the decision to refuse the application was made under A 97(2) according to the state of the file. The claims which formed the subject matter of the appellant’s only request consisted essentially of claims 5 to 13 as filed on entry into the European phase. Although these claims had been covered by the search report drawn up by the JPO they were not covered by the SESR. This is because the EPO, unlike the JPO, considered the application to be non-unitary and so had applied R 164(1). The reason for the ED’s subsequent refusal of the application was essentially that the applicant was not entitled to pursue an application based on subject matter not covered by the SESR.
[2.3] Following filing of the amended set of claims on 26 February 2012, it was not in dispute that the application as amended met the requirements of unity. In T 1981/12 [catchword, point 1] the Board considered, in somewhat similar circumstances, that the correct basis for the refusal of the application was that the applicant was not entitled to pursue an application based on subject matter not searched by the EPO. This is the same approach as the ED took in the present case and the Board agrees with it. The appellant does not in fact dispute that this principle is correct but argues that in circumstances such as the present:
(1) Under R 164(2) an applicant can choose to limit the application either to an invention covered by the ISR or to one covered by the SESR and have the corresponding claims examined for patentability.
(2) If it chooses to limit the application to an invention covered only by the ISR then the EPO must carry out a further search, at no expense to the applicant.
The construction of R 164(2)
[3.1] The appellant argues that the rule should be applied as it stands: the rule clearly says that where the application documents in the European phase do not meet the requirements of unity, the applicant is to be invited (and is thus entitled) to limit the application to one invention covered either by the ISR or by the SESR. This is precisely what the applicant chose to do. It is argued that there is no room or justification for reading the rule in some other way.
[3.2] In fact, as already pointed out, lack of unity was no longer an issue in the examination proceedings because at the outset the appellant had filed amended claims which were indisputably unitary. The applicable part of R 164(2) was therefore:
“Where ... protection is sought for an invention not covered by the ISR or, as the case may be, by the ... or SESR, [the ED] shall invite the applicant to limit the application to one invention covered by the ISR ... or the SESR.”
The appellant’s argument nevertheless remains essentially that set out in point 3.1, above: protection is being sought for an invention covered by the ISR; there is therefore no room for any further objection.
[3.3] The Board concedes that the rule can be read in this way. But the construction of a written enactment must be purposive and not literal; a provision must be construed according to the ordinary meaning of the words used, in context and in the light of its object and purpose: G 2/08. Not all possible literal readings will necessarily be correct.
In T 1981/12 the Board considered in detail the background of the rule. The Board noted that the drafting of the rule was less than ideal, not least because in its current version it attempted to deal with three situations at the same time. Nevertheless the Board construed the rule, in a situation where the EPO was not the ISA, as excluding the possibility of an applicant being entitled to choose to limit its application to an invention covered only by the ISR ([catchword, point 2]). The reasoning of that Board is not repeated but the present Board agrees with it.
[3.4] The appellant criticises the reasoning in T 1981/12 as arguing from back to front: the decision starts from the conclusion that the EPO will not examine claims not covered by an EPO search report, therefore R 164(2) must be construed as effectively excluding the possibility of claims searched only by an ISA other than the EPO playing any role in the European phase, except as part of a divisional application. The appellant in effect argues that the rule does not have to be construed bound up in such a straightjacket. The wording of the rule can be given its literal meaning without contravening the “no search - no examination” principle once it is appreciated that the EPO should simply carry out a further supplementary European search. The ties of the straightjacket are thereby undone.
[3.5] The argument is beguiling but the Board cannot accept it. In reality, it is concerned with the second argument of the appellant, relating to the actual intentions of the legislator and whether an applicant is entitled to a further search, and the Board deals with it in that context.
The present discussion is concerned only with the interpretation of the rule as it stands when read in context. For the same reasons as the Board in T 1981/12 the present Board concludes that the ordinary construction of R 164(2) when read in context is that, in the present factual circumstances, where protection is sought for an invention not covered by a SESR, the applicant is to be invited to limit the application to the one invention covered by the SESR. The consequence of the applicant not doing so is that the application will inevitably be refused, being based on unsearched subject matter.
The intention of the legislator: CA/PL 17/06
[4.1] The Board nevertheless concedes that the literal wording of the rule is ambiguous and therefore it is appropriate to look at the travaux préparatoires to the rule, particularly if this helps to establish its intent and purpose.
[4.2] The principal relevant material is CA/PL 17/06. This concerned the original version of R 164, before it was amended to take account of supplementary ISRs. The document states:
“1. Many practical problems have arisen within the framework of current R 112. 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.
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)
[4.3] The significance of CA/PL 17/06 in the interpretation of R 164(2) was also considered by the Board in T 1981/12 [7-8]. It was concluded that it did not give any great assistance in interpreting the rule. The Board agrees with the general conclusions expressed there and does not repeat them here. As regards the appellant’s particular arguments, the Board does not agree that CA/PL 17/06 makes it clear that the Euro-PCT application may be pursued on the basis of either the subject matter covered by the ISR or the SESR. The critical wording (“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 ...”) is simply a compression of the wording in the rule and to the extent that the rule is ambiguous or difficult to construe, the same ambiguity or difficulty of construction is present in CA/PL 17/06.
[4.4] As to the statement that the new rule would “bring the Euro-PCT procedure in line with the Euro-direct procedure”, the present Board can accept, as did the Board in T 1981/12, that this is puzzling. The aspects of the two procedures which it seems are to be brought into line are those whereby: (a) a Euro-direct applicant can have non-unitary subject matter searched on payment of further search fees (R 64(1)) and (b) a PCT applicant can, in the international phase, have non-unitary subject matter searched on payment of further search fees (Article 17(3)(a) PCT). It must be borne in mind, however, that this passage comes immediately after the statement that “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” (the Board’s emphasis). Moreover, the framers of this document appear to have been concentrating on dealing with the problems which had arisen under R 112 EPC 1973 (see point 1 of the document, quoted above) and in this context the remarks about bringing the Euro-PCT procedure into line with the Euro-direct procedure are perfectly comprehensible (for an explanation of this rule, see T 1981/12 [7.4(b)]). The Board can accept, as submitted by the appellant, that it may have been overlooked that the EPO may take a different view on unity than the ISA and that this situation was therefore not considered. However, the Board does not know for certain and has to take the rule as it finds it. The Board cannot itself legislate for a different version of the rule which may operate more fairly for the applicant.
The Paris Convention (PC)
[5.1] The appellant relies on Article 2 of the PC, headed “National Treatment for Nationals of Countries of the Union”, which article provides:
“(1) Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with.”
In this context a “national” is to be understood as applying to a purely legal entity but recognised as a “national” where application of the PC is sought, for example a company such as the appellant which is incorporated under the laws of Japan or has its principal place of business there. See Bodenhausen, “Guide to the Application of the PC”, page 28.
[5.2] The appellant points out (correctly) that a national of a contracting state to the EPC (“a Euro-applicant”) would have been entitled, either via a Euro-direct application or via a Euro-PCT application, to have all claims searched by the EPO as part of a single application and would not have been forced, as the appellant has been, to file a divisional application if it wishes to achieve this result. The appellant argues that this means it is put to much greater cost, delay and loss of rights (because of the delay) than a Euro-applicant if the appellant wishes to obtain the same protection. The appellant says that the effect of the construction given to R 164(2) by the ED is that the appellant, as a Japanese national, does not have the same advantages or the same protection under the EPC as Euro-applicants. It argues that this differential treatment is an infringement of its rights within Article 2(1) PC, for which it does not have the same legal remedy as a Euro-applicant. It says that the only way to resolve this contradiction is to apply the literal wording of R 164(2) (as in point [3.1] above).
[5.3] The EPO is not a party to the PC and is thus not directly or formally bound by it: G 2/98 , J 15/80 . Further, Article 2(1) PC is not one of the provisions of the PC which is expressly implemented by the EPC (compare the provisions on priority, to which effect is given by A 87 to 89). Nevertheless the EPC constitutes, according to its preamble, a special agreement within the meaning of Article 19 PC, this article providing that the countries of the Union reserve the right to make separately between themselves special agreements for the protection of industrial property, in so far as these agreements do not contravene the provisions of the PC. In the light of this the Board will assume, without deciding, that the EPC should if possible be construed so as not to contravene Article 2(1) PC.
[5.4] It is not necessary for the Board to reach any conclusion as to whether the matter of which the appellant complains falls within the ambit of the expressions “the same protection” or the “same legal remedy” in Article 2(1) PC.
This is because the Board does not accept the appellant’s core submission that it is exposed to any differential treatment under the EPC by reason of its nationality. Thus the different treatment in question arises because the ISR in this case was drawn up by an office other than the EPO, a matter over which the EPO has no control. The reasons for this different treatment are set out in detail in T 1981/12 and are not repeated here but briefly it is because a search drawn up by an office other than the EPO is not considered sufficient to enable the EPO to examine an application for patentability. There is nothing in the PC (or indeed in the PCT) which requires a national patent office to accept searches drawn up by other national patent offices as a basis for its own examination. The different procedural position in which the appellant finds itself, in particular requiring it to file a divisional application if it wishes to pursue subject matter not covered by the SESR, is in effect the EPO’s answer to how to deal with this particular situation. While the Board accepts that the reason why the search was drawn up by the JPO rather than the EPO is to do with the appellant’s nationality, this factor was not itself relevant in the application of R 164 to the present application.
[5.5] In J 6/05 [8.3] it was pointed out that the restrictions in the EPC on the language of filing may favour some applicants over others but that such restrictions did not amount to a legally critical discrimination. The point is not precisely the same as in the present case but illustrates that not all adverse effects arising out of national characteristics amount to differential national treatment under Article 2(1) PC.
[5.6] The appellant’s further submissions on the PC in its letter dated 8 October 2013 were filed after the debate had been closed, and are thus inadmissible. The Board has nevertheless taken note of them ex officio but they do not cause the Board to change its conclusions on this point.
Entitlement to a (further) search
 The argument of the appellant that in the present case the EPO should simply carry out a further search at no expense to the applicant was also considered by the Board in T 1981/12  and rejected. The present Board again agrees with that conclusion: R 164(1) and CA/PL 17/06 make it clear that this is not an option. Moreover, the argument of the appellant, beguiling as it is, is not without further serious objections. In essence it requires the Board to fill in the gaps in the rule which the appellant argues exist because the present situation was overlooked. No doubt in the present case the matter would be straightforward: the further search report would only be required to cover one additional invention. But it is not fanciful to consider that there may be cases where the finding of lack of unity by the EPO would result in there being 10, 100 or even more separate inventions, each of which the applicant could require the EPO to search at no cost to the applicant. It cannot be presumed that this is what the legislator intended. Further, if the submission were correct, it is not clear in what circumstances the EPO would be required to draw up a search to cover the further inventions: would this have to be done automatically as part of the SESR or only on request, by way of an additional SESR? These types of consideration illustrate the dangers of the Board in going further in construing a rule than is justified and in effect purporting to legislate itself.
Contrary to legal principles before the EPO
[7.1] The appellant says that it was unaware that an objection of lack of unity might be raised on entering the European phase. It argues that it would be an undue burden and contrary to the principle of good faith if the applicant were forced to incur the costs of a divisional application in circumstances such as the present.
[7.2] The short answer to this is that nothing which the EPO did in its communications with the appellant could have led the appellant to believe that R 164(2) had the meaning for which the appellant argues. Quite the contrary. The appellant did not identify any other relevant principle of good faith which might be relevant and the Board knows of none.
 The appeal must therefore be dismissed. The Board notes that R 164 has now been changed but this cannot affect the decision in the present case. See CA/D 17/13, Article 3.
 Since the appeal is to be dismissed the request for reimbursement of the appeal fee must also be refused (R 103(1)(a)).
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