J 3/09 – A Modern Hans-in-luck

The present decision made me think of the Grimm brothers’ fairy tale “Hans in luck” where a young fellow earns a lump of gold. He then exchanges his gold against other things. After a series of foolish exchanges nothing is left. In the present case an applicant paid a considerable amount of claims fees but got indeed very little in exchange. But as the applicant got something (at least potentially), the Board does not accede to its request for reimbursement.

To be more specific, the applicant had filed a PCT application comprising 68 claims. The EPO was acting as ISA and found the claims to be non-unitary. Only claims 1 to 15 were searched. Upon entry into the European phase, the applicant paid claims fees for the claims  in excess (58 x 45 = 2610 €; times have changed: nowadays 16640 € would have to be paid). The Examining Division (ED) confirmed the lack of unity and invited the applicant to limit the application to the searched inventions. The applicant requested reimbursement of the claims fees but this request was refused. The applicant then filed an appeal against this decision, arguing inter alia that the fee payment did not have any legal basis.

I recommend that you read the whole decision, which is well argued. If you wish to do so, you can download it here. If you want to content yourself with extracts, please read on:

Before deciding on this matter, the Board explains the relevant proceedings under the EPC 1973 and under the EPC 2000.

Unity and search report on entry into European phase.

[3.5.1] Under R 112 EPC 1973, where, as here, only part of an international application had been searched by the ISA following an objection of lack of unity, and the applicant had not taken the opportunity to pay the relevant additional fees to the ISA, the EPO was required to consider whether the application in fact complied with the requirement of unity. If it considered that it did not comply, the applicant was to be told that a European search report (ESR) could be obtained in respect of the unsearched parts of the application if a search fee was paid. The Search Division was then to draw up a ESR for those parts of the international application in respect of which search fees had been paid.

[3.5.2] The Rules did not state what was to happen if the EPO considered, contrary to the view of the ISA, that the application did comply with the requirement of unity. However, the responsibility for establishing whether or not the application met the requirements of unity of invention under A 82 EPC 1973 ultimately rested with the Examining Division (ED), and the opinion of the EPO acting as the ISA on lack of unity was not final or binding on the ED, see T 631/97 [3.8]. If the ED disagreed with the conclusion in the search report on lack of unity an additional search would have had to be and would have been carried out without payment of any additional fee, since, subject to R 45 EPC 1973, an applicant was entitled to have a unitary invention completely searched. The examination would then have been conducted on the basis of all claims (see T 631/97 and the Guidelines for Examination, C-III, 7.10, and C-VI, 3.1-4).

[3.5.3] The equivalent rule under the EPC 2000 is R 164. Under R 164(2), where the ED considers that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention or protection is sought for an invention not covered by the international search report (ISR), it is to invite the applicant to limit the application to one invention covered by the ISR. This was the procedure followed by the Office in the present case. […]

[3.5.4] The procedure on entry into the European phase (i.e., R 112 EPC 1973; R 164) therefore changed with the coming into force of the EPC 2000, as explained in the remarks to the new rule published by the EPO (see OJ EPO 2007, Special Edition 5, 256),

“New R 164 simplifies the procedure, 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. The new procedure 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.”

[3.5.5] It is this change in procedure which has clearly given rise to the present appeal.

[3.5.6] As with the position under R 112 EPC 1973, R 164 does not state what is to happen if the ED considers, contrary to the view of the ISA, that the application does comply with the requirement of unity of invention. However, the Board does not consider that the position in this respect has altered with the coming into force of the EPC 2000. Although the procedure has changed as explained in point [3.5.4] above, the Board considers that responsibility for establishing whether or not the application meets the requirements of unity of invention still ultimately rests with the ED, and the opinion of the EPO acting as the ISA on lack of unity is not final or binding on the ED. Indeed the practice of the ED in this respect remains as before, see the Guidelines for Examination, C-III, 7.10 and 7.11.1 (especially 7.11.1(v)).

The explanatory remarks (see point [3.5.4] above) appear to the Board to have put the matter correctly by referring to the new limit on the possibility of having multiple inventions searched, while saying nothing about the more general possibility of having hitherto unsearched subject-matter searched. In this respect the legal situation remains unchanged, so that to the extent that an objection of non-unity raised by the ISA in the international phase turns out to be unjustified, the applicant is entitled as of right to have the whole subject matter of his unitary invention searched.

[3.5.7] This is also apparent from the wording of R 164(2) giving the EPO the power to invite the applicant to limit the application to one invention covered by the ISR. This implies that where there is in fact only “one” invention there is no sanction.

[3.5.8] As it happened, in the present application the ED in fact came to the conclusion that the previous opinion of the EPO acting as the ISA on the lack of unity was correct […].

Legal basis for claims fees

[4.1] When on 8 November 2007 the appellant filed the requisite documents for the entry of the application into the European phase and paid the claims fees now in dispute, it was on the basis of R 110(1) EPC 1973.

[4.2] While the Board can accept the general principle that fees paid without a legal basis are refundable, the Board cannot accept the appellant’s basic argument in this case that the payment of claims fees in respect of claims 16 - 68 in the application had no legal basis. There clearly was such a legal basis, namely R 110(1) EPC 1973. The wording of the Rule is clear and straightforward. Apart from Rules 110(2) and (3), there is nothing to be found in the rules or elsewhere which modifies the effect of the rule or deprives it of its effect, for example, where claims are later withdrawn or abandoned.

[4.3] The Board would add that under the EPC the general principle is that fees, once validly paid, are not refundable unless provision to the contrary is made. This means that fees paid on a legal basis are not normally refundable, even if for example the proceedings are terminated shortly after the fee is paid and the objects for which the fees were paid are not achieved. In other words, the reimbursement of a fee requires there to be special provision (see for example decision J 33/86). As regards the refund of claims fees, as already noted, the appellant does not rely on any specific provision of the EPC in support.

[4.4] The basic premise of the appellant’s appeal is therefore false.

[4.5] There is therefore no need for the Board to enter into a discussion about what the precise purpose of the provisions requiring payment of claims fees is. Even if it is to compensate for the extra work involved for the EPO with a large number of claims it follows from the above that the claims fee to fall due whether or not any extra work has actually been done in the case in question.

The appellant has asked rhetorically whether an examiner could validly make an objection under R 43(5) in respect of claims for which claims fees had already been accepted. The answer is clearly yes. Claims fees are payable within a prescribed time in accordance with the Rules Relating to Fees and have nothing to do with the ED’s assessment under R 43(5) of what is a reasonable number of claims.

[4.6] The Board would also point out that, following the Office’s communication of 16 January 2008 under R 161 and R 162 EPC 2000, the appellant had the opportunity to file amended claims and, if appropriate, obtain a refund of excess claims fees. The legal consequences of such action would have been no different than if it had directly entered the European phase with such reduced number of claims. For whatever reason, however, the appellant did not take such opportunity.

Inevitable abandonment of subject matter

[5.1] In any event, the Board also does not accept the further premise which the appellant asserts, namely that it was inevitable that the subject matter of the unsearched claims could not be prosecuted in the application, and must therefore be considered as having been (at some unspecified stage) “abandoned”.

[5.2] As explained in points [3.5.2] and [3.5.6] above, it was perfectly possible, either before or, more realistically, after the EPC 2000 came into force, that the ED would have concluded that the objection of lack of unity had been wrong, in which event an additional search would have been carried out and the examination conducted on the basis of all claims.

[5.3] The appellant has cited the decision of the Enlarged Board (EBA) in G 2/92, where in the concluding opinion it was said that:

“An applicant who fails to pay the further search fees for a non-unitary application when requested to do so by the Search Division under R 46(1) EPC [1973] cannot pursue that application for the subject-matter in respect of which no search fees have been paid. Such an applicant must file a divisional application in respect of such subject-matter if he wishes to seek protection for it.”

[5.4] This statement was considered in decision T 631/97 [3.7.2], where the Board observed that the reference to “a non-unitary application” in this passage: “... means that the application is non-unitary when the ED upon review agrees with the opinion of the search division.”

[5.5] The Board in that decision also noted (see points [3.7.4-3.9.1] of the Reasons) that the practice of the EPO as set out in the then current version of the Guidelines for Examination, C-III, 7.10 and C-VI, 3.4, whereby the ED itself considers the issue of unity and a further search is if necessary carried out, was fully consistent with decision G 2/92.

[5.6] The Board also does not consider that decision G 2/92 is authority for the proposition put forward by the appellant that subject-matter which has not been searched is to be regarded as abandoned. The expression “abandoned” had been used in decision T 178/84 and the EBA in decision G 2/92 [II] observed that:

“It seems that the word “abandoned” as used in this decision [i.e. T 178/84] is not intended to refer to a public renunciation of the applicant’s desire to obtain patent protection for the relevant subject-matter but is used in a narrower sense simply to refer to the fact that protection for the relevant subject-matter per se within that particular patent application is no longer possible.”

As already explained, protection within the present application for unitary subject-matter, even if unsearched, remained possible.

[5.7] Although the appellant asserts that the Guidelines for Examination, C-III, 7.11, explaining R 164(2), support the approach that subject matter in respect of which a search fee has not been paid cannot obtain protection in that application and should be regarded as “abandoned”, subject only to pursuing it via a divisional application, in fact this paragraph of the Guidelines states, in conformity with the Guidelines at paragraphs C-III, 7.11.1(v) and B-II, 4.2(iii), referred to above:

“(ii) if, during the international search, an objection of lack of unity has been raised and the applicant has neither taken the opportunity to have the other invention(s) searched by paying additional search fees for them, nor amended the claims so that they are limited to the invention searched, and the examiner agrees with the objection of the ISA, he will then proceed to issue a communication under Rule 71(1) and (2), dealing exclusively with the subject-matter of the one and only invention which has been searched.” (Emphasis added by the Board)

As already noted in points [3.5.2] and [3.5.6] above, the Guidelines at C-III, 7.11.1(v) go on to state what happens where the examiner does not agree with the objection of the ISA.

[5.8] In this regard, the Board generally cannot accept the appellant’s argument that this state of affairs altered following the introduction of the BEST system of examination in 1990. While it is true that following the introduction of this system the same person who gave the opinion on unity on behalf of the EPO acting as ISA may carry out the examination for unity of invention as principal examiner on behalf of the ED, this will not necessarily be the case and is in any event irrelevant. It cannot be assumed, as the appellant apparently does, that the ED will fail to carry out its obligation to consider the question of unity. Not only are the Guidelines for Examination on this matter clear, as already explained, but any finding may be made the subject of formal decision and an appeal to the Boards of Appeal.

[5.9] Furthermore, in the frequent case of an a posteriori objection of non unity, even if justified, the claims may usefully serve as a basis for later limiting the claimed subject-matter to a more specifically defined but now unitary and searched invention. Admittedly, the extent to which this is possible depends on the circumstances of the individual case, but it remains the position that the payment of claims fees for claims exceeding the number of ten may have a useful purpose on its own independently from the question whether all the claims concern unitary subject-matter.

The Board then deals with arguments of the appellant concerning the entry into force of the EPC 2000 and an alleged “delay” of the office. The final request of the appellant is more surprising:

[8.1] The appellant alternatively requests to be permitted to prosecute all claims in the application subject to payment of additional search fees, with a refund of all fees paid on the related divisional application EP 08164537.6 (which would then be withdrawn).

[8.2] The appellant has not suggested any legal basis for the making of such an order, and the Board cannot itself see any basis for doing so in the context of the present appeal proceedings. The only subject of the present appeal proceedings is the appealed decision, i.e. its rejection of the appellant’s request for refund of claims fees paid. Nothing else having been decided by the ED, any decision on the appellant’s requests referred to above would exceed the decision making power of the Board in the present proceedings.

Personally, I have never seen the ED invalidate an objection of lack of unity made by the EPO acting as ISA, and I guess it hardly ever happens. So my personal approach would be never to pay claims fees for claims that have not been searched by the EPO/ISA but to file divisionals for the unsearched claims I need to have examined. If the lack of unity objection was made by an ISA other than the EPO, the situation is quite different because there will be a complementary search.