| European Case Law Identifier: | ECLI:EP:BA:1986:W000786.19860606 | ||||||||
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| Date of decision: | 06 June 1986 | ||||||||
| Case number: | W 0007/86 | ||||||||
| Application number: | - | ||||||||
| IPC class: | A61K | ||||||||
| Language of proceedings: | DE | ||||||||
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| Title of application: | - | ||||||||
| Applicant name: | Mückter | ||||||||
| Opponent name: | - | ||||||||
| Board: | 3.3.01 | ||||||||
| Headnote: | 1. An invitation to pay additional search fees pursuant to Article 17(3)(a) PCT is not legally effective unless reasons are given to substantiate lack of unity (cf. Decision W 04/85 dated 22 April 1986). 2. Straightforward cases in which a mere list of the different aspects of an invention's subject-matter might be regarded as substantiation constitute rare exceptions, particularly in the chemical field. |
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| Keywords: | Lack of unity Obligation by the Searching Authority to specify reasons |
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Summary of Facts and Submissions
I. On 27 November 1985 the applicants filed international patent application PCT/EP 85/00647 with the European Patent Office, the designated Office within the meaning of Article 2(xiii) PCT.
II. On 21 March 1986 the European Patent Office as International Searching Authority sent the applicants an invitation pursuant to Article 17(3)(a) and Rule 40.1 PCT. It was clear from the invitation that the subject-matter of Claims 1 to 3 on the one hand and that of Claim 4 on the other were considered to lack unity of invention although the reasons were not specified as provided for in Rule 40.1 PCT and in the form used for the invitation.
III. On 16 April 1986 a debit order was received from the applicants for the additional search fee requested together with a protest pursuant to Rule 40.2(c) PCT. According to the reasoned statement submitted in support of the protest, Claims 1 to 3 concern the use of certain substances in combination with antiphlogistics, antibiotics and chemotherapeutic agents, where Claim 2 is specifically directed to the use of substances in the form of their lithium salts; Claim 4 is directed to the lithium salts as such which were regarded as new; the requirement of unity of invention within the meaning of the EPC and its Implementing Regulations is therefore complied with.
Reasons for the Decision
1. Pursuant to Article 154(3) EPC and Article 9 of the Agreement between WIPO and the European Patent Office the latter's Boards of Appeal are responsible for deciding on protests made by applicants against additional search fees charged under Article 17(3)(a) PCT (OJ EPO 4/1978, p. 249). The protest is admissible pursuant to Rule 40.2(c) PCT since the applicants paid the additional fee under protest and accompanied their protest by a reasoned statement to the effect that the international application complied with the requirement of unity of invention.
2. In requesting an additional search fee the International Searching Authority indicated that it considered, on the one hand, the use of purified lipopolysaccharides and their derivatives for anti- infectious prophylaxis in combination with non-steroidal antiphlogistics, antibiotics and chemotherapeutic agents (in which the lipopolysaccharides and/or their derivatives and the antiphlogistics could be present in particular as lithium salts) and, on the other, the lithium salts of the lipopolysaccharides and/or their derivatives and the antiphlogistics as such, to relate to a group of inventions not so linked as to form a single general inventive concept within the meaning of Rule 13.1 PCT. Contrary to Rule 40.1 PCT no reasons were given to support this view.
3. In a decision (W 04/85 dated 22 April 1986) taken by another Board (and likewise to be published), the view is expressed that the requirement to give reasons in an invitation pursuant to Article 17(3)(a) PCT and Rule 40.1 PCT is so fundamental that an unsubstantiated invitation cannot be regarded as legally effective. The present Board supports that view.
4. In the cited decision it is further stated that in straightforward cases all that may be necessary to substantiate lack of unity is a list of the application's subject-matters. But it seems appropriate to add that this can be the case only exceptionally and will rarely occur in the chemical field.
5. The present case is not a straightforward one: according to the problem depicted in the introductory part of the description which the International Searching Authority must take as its point of reference, the administration of antibiotics and chemotherapeutic agents will improve the known antimicrobial prophylaxis before operations. This does not, at any rate prima facie, rule out the possibility that the subject-matter both of Claims 1 to 3 and of Claim 4 contributes to the solution of this problem. In the absence of detailed reasons the Board is unable to establish whether the invitation to pay an additional fee was correctly issued.
6. The invitation was therefore issued incorrectly because it violated the obligation to specify reasons laid down in Rule 40.1 in conjunction with Rule 13.1 PCT. Consequently it is not legally effective and therefore the additional fee paid by the applicants cannot be retained.
ORDER
For these reasons, it is decided that:
Reimbursement of the additional fee to the applicants is ordered.
