T 0087/88 (Further search fee) of 29.11.1991

Summary of Facts and Submissions

I. The appellants are the applicants in respect of European patent application No. 85 103 050.2 (publication No. 0 159 525) containing a single independent Claim 1 and six dependent claims.

II. In a letter of 6 September 1985 the Search Division informed the appellants in accordance with Rule 46(1) EPC of the lack of unity (a posteriori) of the claimed invention and invited them to pay a further search fee. The two inventions were presented as follows:

- Claims 1 to 5: Fitting of the measuring device in conduits

- Claims 1, 6, 7: Measuring casing.

The appellants did not respond to that invitation and the search report was drawn up only for the invention set out first, in other words for Claims 1 to 5.

III. On receipt of the search report and prior to receipt of the first communication from the Examining Division, the appellants filed new Claims 1 to 9 on 22 August 1986, only the single independent Claim 1 of which related to the internal structure of the measuring device.

In their letter of 3 April 1987, received by the EPO on 8 April 1987, the appellants requested in the alternative that the procedure be continued on the basis of new Claims 1 to 8, only the single independent Claim 1 of which related to the connecting ends of the measuring device, the casing of the measuring device and its internal structure.

IV. In its decision of 6 November 1987 the Examining Division refused European application No. 85 103 050.2 on the basis of Article 97(1) EPC. In the contested decision the Examining Division found the original Claim 1 lacking in inventive step, and agreed with the Search Division on the lack of unity a posteriori of the claimed invention. It considered that the subject-matter of Claim 1 according to the main request and that of Claim 1 according to the auxiliary request lacked unity with the invention for which a search was carried out, and that these could therefore only be pursued in a divisional application.

V. The appellants lodged an appeal against that decision on 5 January 1988 and at the same time paid the fee for appeal. The statement of grounds was filed on 22 January 1988.

VI. The appellants request that the contested decision be set aside and

1.1 that a patent be granted on the basis of Claims 1 to 9 as filed on 22 August 1986 and supporting documents still to be adapted (main request);

1.2 that, alternatively, a patent be granted on the basis of Claims 1 to 8 as filed on 8 April 1987 and supporting documents still to be adapted (auxiliary request);

1.3 that, also alternatively, the case be remitted to the department of first instance for further prosecution;

2. that, very much in the alternative and in the event that the appeal is not allowed, the subject-matter of Claims 1 to 9 as filed on 22 August 1986 be divided out and prosecuted in a divisional application;

3. that, in the event that one of the requests 1.1 to 1.3 cannot be met, a date be fixed for oral proceedings, and

4. that in view of a "series of procedural errors" the fee for appeal be reimbursed.

VII. The appellants base their requests mainly on the following arguments:

(a) According to Rule 68 EPC, decisions of the European Patent Office which are open to appeal must be reasoned and accompanied by a written communication of the possibility of appeal. Neither of these requirements was met in the case of the communication under Rule 46(1) EPC issued by the Search Division on 6 September 1985. That communication can therefore scarcely be regarded as representing an appealable decision. But even as an invitation it would not meet the requirement under Article 113 EPC because it does not state reasons for the purported lack of unity, and thus it cannot have any legal effect.

In the case of a communication issued under Rule 46(1) EPC the Examining Division has to examine the question of the lack of unity of the claimed invention even if a further search fee is not paid.

(b) In addition, the Search Division has exceeded its allocated tasks by examining the relevance of the cited documents and claiming lack of unity a posteriori.

(c) To the extent that in the contested decision the Examining Division has examined the patentability of Claim 1 as originally filed, it has addressed a subject-matter for which grant was not requested at the time of the decision. The statements made are therefore at variance even with Article 113(2) EPC and are basically irrelevant to the present case.

(d) The objection to the lack of unity of the invention defined in the claims filed on 22 August 1986 (the main request) is also not justified:

The subject-matter of the present application is a compact, wieldy and intrinsically unitary measuring device to be fitted into a measuring conduit.

For the measuring device to be cleaned it must be possible to remove it from the measuring conduit and open it. The invention therefore resides in solving the problem of how to facilitate or make possible the cleaning process. There is no doubt that the cleaning could not only be at least facilitated by the features of Claim 1 and those of Claims 2 and 3 of 22 August 1986 but also by the features of Claims 4 to 9 of the same date and that these could help in solving the problem. The subject-matters of those claims are therefore based on a common unitary problem for which parts of the various claims are at least suitable for helping to find a solution.

(e) Other considerations should also have at least been taken into account and noted in the examination.

Insofar as the Examining Division "assumes" that the appellants have decided to have the application prosecuted further as if it related to the invention for which the search report was drawn up, any such assumption cannot justify the decision taken either. Such an assumption is tantamount to presuming implicitly that at least the unsearched part of the present application has been abandoned. Abandonment cannot, however, simply be assumed; it requires a clear indication of the wish to do so. That presupposes at least an express action on the part of the person required to indicate such a wish. Abandonment does not have to be specifically referred to as such, but it must be clearly expressed (cf. BGH, GRUR 87, 510 et seq. Mittelohr-Prothese).

VIII. Claims 1 to 7 as originally filed were worded as follows:

"1. Measuring device for fitting in beverage and in particular beer conduits, with a measuring casing and connecting ends for conduits,

characterised in that

the connecting ends are constructed as intermediate pieces (7, 8; 6, 9, 10) firmly connectable to the conduit ends and the intermediate pieces are detachably connected to the measuring casing (1, 2) by means of connecting parts (8, 6', 4, 6).

2. Measuring device according to Claim 1, characterised in that connecting parts (6, 8) of the intermediate pieces linked to the connecting parts (4, 6') of the measuring casing are constructed in complementary manner to one another.

3. Measuring device according to Claim 1 or 2, characterised in that the connecting parts (4, 6, 6', 8) are connected to one another by means of plug couplings (4.1, 8.1).

4. Measuring device according to Claim 1 or 2, characterised in that the connecting parts (4, 6, 6', 8) have bayonet-like catches.

5. Measuring device according to one of the preceding claims, characterised in that the connecting parts (4, 6') of the measuring casing (1, 2) are screwed to the latter.

6. Measuring device according to one of the preceding claims, characterised in that the measuring casing has an upper and lower part (1, 2) and said upper and lower parts are interconnected by a bayonet catch (1.1, 2', 2'').

7. Measuring device according to Claim 6, characterised in that retaining ribs (1') with bevels (1'') on their inside are provided for the purpose of centring a measuring vane (3) in measuring casings (1, 2)."

IX. Claim 1 according to the main request is worded as follows:

"1. Measuring device for fitting in conduits for beverages such as beer and lemonade with a casing consisting of an upper and lower part and connecting ends for conduits, and with a vane wheel pivoted in the measuring casing as a measuring body, characterised in that the vane wheel (3) is mounted by pivot bearings (3') and is forcibly centred by joining together the casing parts (1, 2)."

Dependent Claims 2, 3 and 9 contain further information on the internal structure of a measuring device according to Claim 1, and dependent Claims 4 to 8 specify the connecting ends of a measuring device according to Claim 1.

X. Claim 1 according to the auxiliary request is worded as follows:

"1. Measuring device for fitting in beverage and in particular beer conduits, with a measuring casing and connecting ends for conduits and a measuring body,

characterised in that

the connecting ends are constructed as intermediate pieces (7, 8; 6, 9, 10) firmly connectable to the conduit ends and the intermediate pieces are detachably connected to the measuring casing (1, 2) by means of connecting parts (8, 6', 4, 6), the connecting parts (6, 8) of the intermediate pieces linked to the connecting parts (4, 6') of the measuring casing being constructed in complementary manner to one another, and that the vane wheel is mounted by pivot bearings (3') and is forcibly centred by joining together an upper part (1) and a lower part (2) of the casing."

Dependent Claims 2 to 4 relate to the connecting ends of the measuring device according to Claim 1, and dependent Claims 5 to 8 relate to the measuring device's casing and its internal structure.

Reasons for the Decision

1. The appeal is admissible.

2. The Enlarged Board of Appeal (Article 22 EPC) has ruled that when the EPO carries out an international search, an international application may also be considered, under Article 17(3)(a) PCT, not to comply with the requirement of unity of invention "a posteriori", i.e. after prior art is taken into consideration and a provisional opinion on novelty and inventive step is thereby formed (Decision G 1/89 "Polysuccinate esters" (OJ EPO 1991, 155) and Opinion G 2/89 "Non-unity a posteriori" (OJ EPO 1991, 166)). This principle applies equally when carrying out a European search (Article 92 EPC) because in both cases the searches and search reports are virtually identical (cf. Guidelines for Examination in the EPO, Part B, Chapter III, Section 4.4). The appellants' objection that a Search Division is not entitled to decide that the claimed invention lacks unity "a posteriori" as well is therefore unfounded.

3. The Search Divisions (Article 17 EPC) do not belong to the departments of first instance which issue appealable decisions within the meaning of Article 106(1) EPC. Consequently the provisions of Rule 68(2) EPC are not applicable to communications under Rule 46(1) EPC. Moreover, these communications do not represent decisions within the meaning of Article 113(1) EPC because according to Article 97(1) in conjunction with Article 82 and Rule 30 EPC it is for the Examining Divisions to decide on unity of invention. The appellants' objections to the Search Division's communication of 6 September 1985 are thus without foundation.

4. On the question of the legal consequence of an applicant failing both to pay a further search fee in accordance with Rule 46(1) EPC and expressly to abandon the relevant subject-matter in his European patent application, the following needs to be said:

4.1 In decision T 178/84 (OJ EPO 1989, 157) the Board states in the form of an obiter dictum that it is clearly the intention of Rule 46(1) EPC "to regard subject-matter as abandoned in a particular patent application if, in response to an invitation according to this rule, the further search fee is not paid for this subject-matter within the time limit set by that rule".

According to that point of view the mere fact of non-payment of this fee would thus result for the applicant in a loss of rights, in this case loss of the right to decide which of the subject- matters originally disclosed he may still wish to claim as an invention when the European patent application is prosecuted further. The applicant would then only have the possibility of continuing with the subject-matter for which the further search fee was not paid in a divisional application (Article 76 EPC).

4.2 The Board does not share this view. Where the legal consequence of an omission is a loss of rights, this is expressly stated in the EPC provisions (cf. decision of the Enlarged Board of Appeal G 1/88 "Opponent's silence/HOECHST", OJ EPO 1989, 189, 194). To interpret the legal consequence of non-payment of the further search fee under Rule 46(1) EPC as abandonment of a subject-matter in a particular European patent application would thus be admissible only if a clear basis for such an interpretation could be found in the wording of that provision. That is not however the case. On the contrary, Rule 46(1), third sentence, EPC would merely suggest, by inverse inference, that non-payment of a further search fee results in the Search Division responsible not drawing up a European search report for those parts of the European patent application relating to the further invention concerned. The decision concerning the future legal fate of those parts is in no way prejudiced. The Examining Division responsible has sole power to decide this because the decision on the unity of the invention lies with it (cf. Section 3 above). If however the documents of the European patent application are amended directly after the search is carried out, it may in certain circumstances be unnecessary to decide on the legal fate of those parts (cf. Section 5 below).

5. The unity requirement under Article 82 EPC must be satisfied by a European patent application not only as filed but also at later stages of the patent grant procedure before the Examining Division (cf. decision T 178/84, OJ EPO 1989, 157). Unity of invention can therefore only ever be judged on the basis of documents constituting the European patent application at any given time during the grant procedure (cf. decision T 101/88 of 21 May 1990). Consequently, if an applicant amends the claims in his European patent application in accordance with Rule 86(2) EPC in such a way that they differ in substance from the claims as filed, the Examining Division responsible has to determine in particular whether the amended claims as such satisfy the requirement under Article 82 EPC. If, on the other hand, prior to the amendment the applicant has omitted to pay a further search fee required by a Search Division on the basis of Rule 46(1) EPC, the Examining Division concerned is obliged to examine the unity of the invention claimed in the documents as originally filed only insofar as amended claims are submitted during the examination procedure relating to a further invention, ascertained by the Search Division in the documents as filed, for which no European search report has been drawn up owing to failure to pay the further search fee, and an additional search therefore has to be carried out because in such circumstances the applicant could only thereby enforce a legitimate interest under the law in having the documents as originally filed so examined.

6. The claims according to the main and auxiliary requests cover features of Claim 6 as originally filed for which no European search report was drawn up. In the light of the statements made above (in Section 5) it first has to be established whether the Search Division was right in not searching the subject-matter of that claim as filed. The following comments need to be made in this respect:

6.1 In the search report of 6 September 1985 the appellants were informed that the European patent application contained two inventions or groups of inventions, and that the first of these related to "the fitting of a measuring device in conduits". In the Search Division's opinion this first invention or group of inventions was referred to in Claims 1 to 5 as originally filed. It overlooked the fact however that the original Claim 6 not only contained a reference to said Claim 1 but also, as an alternative, a reference to one of the other preceding Claims 2 to 5. In addition, Claim 6 correctly refers back not only to Claim 1 but also to dependent Claims 2 to 5, since it relates to a special presentation of the measuring casing which could be incorporated as an additional feature into any of the subject- matters defined in the preceding claims.

6.2 The search report for those parts of the European patent application relating to this first invention or group of inventions ought consequently to have taken account of the subject-matter of Claim 6 as originally filed too, since that claim contains a reference to original Claims 2, 3, 4 or 5 in combination with original Claim 1.

6.3 Since for this reason alone a search report should have been drawn up for the subject-matter of Claim 6 as originally filed, it is unnecessary to examine whether the documents of the European patent application as first filed satisfy the requirement of unity of invention (Article 82 EPC).

7. Claim 1 according to the main request (see Section IX above) relates to a measuring device for fitting in conduits with a measuring casing, a specially constructed measuring body and, in quite general terms, connecting ends for conduits.

This subject-matter clearly does not represent a combination of the features of Claims 1 and 6 as originally filed since the important "intermediate pieces" are missing. Furthermore, the description (on page 2, Section 2) indicates that those intermediate pieces are essential for solving the problem.

The question then arises as to whether Claim 1 according to the main request satisfies the requirement of Article 123(2) EPC at all.

8. In the Board's view the subject-matter of Claim 1 according to the auxiliary request (see Section X above) relates to a measuring device capable of being fitted that displays features of Claims 1, 2 and 6 as originally filed. By combining those claims, however, an embodiment is defined which falls within the invention or group of inventions first mentioned in the search report (see Section 6.2 above).

An additional search may also have to be carried out to enable the patentability of the subject-matter of this claim to be examined.

9. Since the Examining Division has not yet examined the admissibility of the amendments under Article 123(2) EPC or the patentability of the invention claimed by the appellants according to the main and auxiliary requests, the Board will avail itself of the option provided by Article 111(1) EPC and remit the case to the Examining Division for further prosecution.

10. This outcome of the appeal proceedings renders null and void the alternative request filed by the appellants for the subject- matter of the claims according to the main request to be divided out and prosecuted further in a divisional application. The same applies to the other alternative request for oral proceedings.

11. The fact that the department of first instance came to a different conclusion from the Board in respect of the series of questions associated with the unity of the invention in the present case does not constitute a substantial procedural violation within the meaning of Rule 67 EPC rendering it necessary to reimburse the fee for appeal. The appellants' request to that effect is therefore rejected.

ORDER

For these reasons it is decided that:

1. The contested decision is set aside.

2. The case is remitted to the Examining Division for further prosecution.

3. The request for reimbursement of the fee for appeal is rejected.