Key points
- The Examining Division did not admit a claim request under Rule 137(3) because of non-compliance with Rule 137(5) first sentence.
- The Board follows T 2431/19 that Rule 137(5) pertains to allowability.
- “For this reason alone, the decision not to admit under Rule 137(3) EPC is incorrect and the auxiliary request is to be taken into account in accordance with Article 12(4) RPBA 2007.”
- “the board does not agree with the decision as regards Rule 137(5) EPC.”
- “The board agrees with the general statement (see also Guidelines H-II, 6.2) that, in order to assess whether or not amended claims fulfil the requirements of Rule 137(5) EPC, first sentence, it needs to be established whether or not an objection of lack of unity would have been raised if the amended claims had been present in the set of claims on file at the time of the search.”
- This is indeed established case law, see my article in epi Information 2018/2.
- “The board takes the view that there cannot be a lack of unity between two claims where one strictly limits the subject-matter of the other. Accordingly, original claim 1 cannot lack unity with present claim 1, which is a strict limitation of original claim 1.”
- As a comment, I'm not sure what a ‘strict limitation’ is in this context.
- The Board: “ If, for example, claim 1 lacked novelty a posteriori and a "special technical feature" of the original set of claims was contained in claim 2, then the amendment of claim 1 by incorporation of another "special technical feature" with an unrelated effect could lead to the situation that amended claim 1 and original claim 2 lacked unity and that, accordingly, the amendment could not be allowed under Rule 137(5) EPC. ”
- As a comment, I'm not sure what lack of novelty 'a posteriori' means here, as opposed to lack of novelty 'a priori' I assume.
- But I agree that the amendment can not be allowed in this case.
- “If, however, the original "special technical feature" was contained in original claim 1, then the addition of another, even unrelated, "special technical feature", could not introduce a lack of unity between original and amended claim 1. Accordingly, such an amendment cannot be objected to under Rule 137(5) EPC.”
- Lack of novelty 'a posteriori' suggests to me that claim 1 contains a special technical feature, but then the claim is novel and inventive over 'the prior art at hand' (Rule 44(1): “The expression "special technical features" shall mean those features which define a contribution which each of the claimed inventions considered as a whole makes over the prior art.”).
- The Board: “if an amendment introduces a feature with an effect entirely unrelated to the effects of the original claims, this might well be a sound basis for the examining division to deny its consent under Rule 137(3) EPC”
- “since amended claim 1 is a strict limitation of original claim 1, there cannot be a lack of unity and thus there is no violation of Rule 137(5) EPC.”
- “Therefore, the board considers the subject-matter of claim 1 of auxiliary request 1 to involve an inventive step over D2.”
- The case is remitted for an additional search. “Since the board considers it probable that the search for present claim 1 did not cover the additional feature taken from the description ([58]), it is not in a position to order the grant of a patent. ”
- The purpose of Rule 137(5)(s.1) is precisely (unpaid) additional searches being necessary if the applicant takes a feature from the description that was correctly not searched during the search stage.
T 1866/15 -
https://www.epo.org/law-practice/case-law-appeals/recent/t151866eu1.html
3. Admittance of auxiliary request 1 under Rule 137(5) and (3) EPC
3.1 The examining division decided not to admit the main request under Rule 137(3) EPC because it did not meet the requirements of Rule 137(5) EPC (first sentence).
3.2 The board considers that Rule 137(5) EPC, first sentence, constitutes a substantive requirement on amended claims, and endorses the findings of T 2431/19 on this point. If an amendment does not comply with Rule 137(5) EPC, it is not allowable on that ground alone and the examining division no longer has discretion whether or not to admit it under Rule 137(3) EPC.
3.3 For this reason alone, the decision not to admit under Rule 137(3) EPC is incorrect and the auxiliary request is to be taken into account in accordance with Article 12(4) RPBA 2007.
source http://justpatentlaw.blogspot.com/2021/10/t-186615-rule-1375-case.html
