T 0544/88 (Reduction in NOx content) of 17.4.1989

Summary of Facts and Submissions

I. The appellants filed European patent application No. 85 100 682.5 (publication No. 0 163 001).

II. In a communication dated 9 July 1987 the European Patent Office's Examining Division objected to the subject-matter of this application on the grounds that it lacked unity within the meaning of Article 82 EPC.

III. The appellants filed their reply to this communication on 5 November 1987, enclosing a new set of claims for examination and stating that this did not preclude the filing of further claims. They requested that the deletion of any subject-matter, particularly that of the original Claims 9 to 12, be deferred until a set of allowable claims was arrived at on the basis of those enclosed or a comparable set. No amended description was filed.

IV. On 27 June 1988 the European application was refused by the Examining Division on the grounds that the original application, and particularly its Claims 1 to 12, did not comply with the unity-of-invention requirement under Article 82 EPC. With regard to the claims newly filed on 5 November 1987, the Examining Division stated that an application lacking unity could not acquire it merely through the submission of new claims - whether or not they related to an invention meeting the unity requirement. An application could be made to meet that requirement only through an unconditional and explicit limitation involving either surrender or the deletion of subject-matter.

V. The appellants filed an appeal against this decision.

VI. In their statement of grounds the appellants pointed out that, in addition to surrender or deletion, it was also possible to ensure that a patent application met the unity requirement by adapting the wording of the claims or in some similar way - particularly if the applicant believed the application related to subject-matter or an invention which met the unity requirement, even if this may not have been immediately obvious from the claims. At the same time they filed a new set of Claims 1 to 8 on which the further proceedings were to be based and which in their opinion concerned subject-matter or an invention which met the unity requirement.

VII. The appellants request that the contested decision be set aside and the application remitted to the Examining Division for further prosecution.

Reasons for the Decision

1. The appeal is admissible.

2. Although this was not expressly stated in the Examining Division's decision to refuse the application, that decision was based on Rule 25(1)(b) EPC as valid at the time, whereby a European divisional application might be filed within two months following the "limitation", at the invitation of the Examining Division, of the earlier European patent application if the latter did not meet the requirements of Article 82 EPC (cf. point 4 of the communication from the Examining Division dated 9 July 1987). The decision also took its cue from the relevant passage in the Guidelines for Examination in the European Patent Office, Part C, Chapter VI, 9.2, second paragraph, which reads as follows: "If no limitation to a single invention is effected within the set time limit, or the limitation is not clear or conditional, the Examining Division should normally refuse the application".

3. However, Rule 25(1) EPC was amended with effect from 1 October 1988 in a decision of the Administrative Council of the European Patent Organisation dated 10 June 1988. The valid text now reads as follows:

"(1) Up to the approval of the text, in accordance with Rule 51, paragraph 4, in which the European patent is to be granted, the applicant may file a divisional application on the pending earlier European patent application".

4. Given the suspensive effect of the present appeal on the Examining Division's decision (Article 106(1), last sentence, EPC), the Board takes the view that the new text of Rule 25(1) should be applied in the present case.

5. No justification can be found in the text of Rule 25(1) EPC now in force for requesting the applicant to limit the patent application to an invention meeting the unity requirement. Nor can it be inferred from the other provisions of the EPC that a patent application should be refused on the basis of Article 82 EPC if the applicant, in response to an objection of non-unity, has filed new claims relating to one invention only or to a group of inventions within the meaning of Article 82 EPC, but has not expressly surrendered the other inventions - for example, by deleting the appropriate parts of the description and drawings. In other words, the Board believes that the unity of a patent application should be assessed solely on the basis of the valid claims, as implied by the wording of Article 84 and Rule 30 EPC: "The claims shall define the matter for which protection is sought." (Article 84 EPC, first sentence), and "Article 82 shall be construed as permitting in particular that one and the same European patent application may include: (a) in addition to an independent claim ..." (Rule 30 EPC). Clearly, therefore, the unity of a patent application can be judged only by reference to the valid claims. However, the Examining Division may request the applicant to bring the description and drawings into line with the valid claims (Rule 27(1)(d) EPC) and to delete from the patent documents those parts of the description and drawings which do not refer to claimed inventions (Rule 34(1)(c) EPC). It will then be necessary to check in each individual case whether such adjustments ought to be deferred until allowable claims are submitted.

6. In the present instance the appellants filed new claims whose unity was not checked by the Examining Division (see point 5 on page 5 of the contested decision). The Board therefore considers that the case should be remitted to the Examining Division for further examination as provided for in Article 111 EPC.

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 examination on the basis of Claims 1 to 8 filed on 21 October 1988.