T 2146/19 - Rule 137(5), second sentence

Neha Kakkar 21:55 1

Key points

The Board sets aside a refusal decision based on Rule 137(5) EPC, for lack of sufficient reasoning by the Examining Division.
The Examining Division did not state whether the first or second sentence of Rule 137(5) was the legal basis. The Board assumes that it was the second sentence, which states that "Nor may [the amended claims] relate to subject-matter not searched in accordance with Rule 62a or Rule 63."
The case at hand is a Euro-PCT application with the EPO acting as ISA. The EPO as ISA had limited the search under Article 17(2)(b) PCT ("the description, the claims, or the drawings, fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out").
The applicant argues that a limitation under Article 17(2)(b) PCT is not a limitation under Rule 62a or Rule 63 EPC.
The Board: "This question may require further discussion, but can remain open for the present case."
The Board: "Even if the examining division were to be convinced that a procedure corresponding to Rule 62a/63 EPC had been carried out during the international phase, this, in any case, does not release the examining division from substantiating this view in the decision and from replying to the arguments put forward by the applicant. In addition, the decision should also have explained and justified the deficiencies mentioned in Rules 62a(1)/63(1) EPC that make a meaningful search impossible."
The refusal decision did not identify these deficiencies and the decision is set aside. The case is remitted.
As a comment, there are hence no ratio decidendi about how Rule 137(5), second sentence, works for Euro-PCT applications. It seems the literature is also silent about this.