Key points
- This appeal concerns the refund of the search fee (in addition to clarity). The Board in the headnote: “In determining whether or not to request further search fees from an applicant, the Search Division should not adopt a purely algorithmic approach, but should consider whether it would be reasonable, under the circumstances of the case and in the light of the subject-matter already searched and the prior art found, to demand additional fees for extending the search to the remaining claims”
- First to the main issue of clarity: “Claim 1 of the present main request differs considerably from the version which was rejected by the Examining Division on the grounds that it failed to meet the requirements of Article 84 EPC. The Board sees no reason to object to the present version under Article 84 EPC.” Admissibility of the amended request is not discussed.
- As to the search fee: “he Examining Division reviewed the non-unity finding pursuant to Rule 64(2) EPC to determine whether the request for a further search fee was justified, and in the contested decision the request for reimbursement was rejected ”
- The Search Division found non-unity a posteriori, i.e. following the finding that claim 1 lacked novelty over D1. Where an independent claim is found to lack novelty, it is often the case that a formal objection of lack of unity of invention could be envisaged between two or more groups of dependent claims. However, the Search Division (or the Examining Division reviewing a non-unity finding pursuant to Rule 64(2) EPC) should bear in mind that unity of invention under Article 82 EPC is "merely an administrative regulation" (G 1/91, Reasons, point 4.1)”
- The Boards instruct that the Search and Examining Divisions should give due consideration to the following advice from the Guidelines: "Lack of unity is not a ground of revocation in later proceedings. Therefore, although the objection is certainly made and amendment insisted upon in clear cases, it is neither raised nor insisted upon 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."
- However, in the present case, claim 3 was part of the first invention and the claim 6 at issue “relates to essentially the same subject-matter as claim 3, with claim 3 going into more detail” (however, there is an issue with claim dependencies)
- “ it is clear from the search opinion that the Search Division considered the additional features of claim 3 to be incapable of contributing to inventive step on the basis of documents already present in the partial search report”
- “In the light of this, the Board does not see why a further search, requiring the payment of an additional search fee, could logically be deemed necessary for the subject-matter of claim 6.”
5. Request for a Refund of the Additional Search Fee
5.1 As a result of a finding of lack of unity of invention (Article 82 EPC), a partial European Search Report pursuant to Rule 64(1) EPC was drawn up. An attached communication (supplemental sheet B) explained that the common concept linking the dependent claims was considered to be the subject-matter of claim 1, which was not new in the light of D1. The subject-matter of claims 2 and 6 did not fulfill the requirement of unity of invention (Article 82 and Rule 44 EPC), and hence two inventions which were not so linked as to form a single general inventive concept could be identified based on the following groupings of claims:
Invention 1: claims 1-5, 7-11
Invention 2: claims 6, 12.
The partial European search report included the following statement: "The present partial European search report has been drawn up for those parts of the European patent application which relate to the invention first mentioned in the claims"; hence, the subject-matter of claims 1-5 and 7-11 was searched. Three documents (D1-D3) were cited as follows: D1 as "X" for claims 1 and 7; D1 and D2 as "Y" for claims 2-5 and 8-11; D3 as "Y" for claims 3, 4, 9 and 10.
source http://justpatentlaw.blogspot.com/2021/09/t-080618-search-division-should-not.html
