W 0008/87 (Protest) of 14.12.1987

Summary of Facts and Submissions

I. ..., the Applicant filed an international patent application ....

II. ..., the European Patent Office (EPO), acting as International Search Authority (ISA), issued an invitation to pay five additional search fees in accordance with Article 17(3)(a) and Rule 40.1 PCT, in view of the fact that it considered the above identified application as not complying with the requirements of unity of invention.

Six inventions were identified: ....

Claim 10: ...

The reason given for this finding was that in the light of EP-A-... the general inventive concept expressed in Claim 1 did not stand up to examination nor could it be considered to be new. Therefore, the various subjects indicated could no longer be considered as an inventive unity.

III. On ... the Applicant indicated by letter that he paid the five additional search fees under protest (Rule 40.2(c) PCT). ...

Furthermore, the Applicant asserted that Claim 1 did stand up to examination and defined new subject-matter which was patentable in view of the cited reference and, therefore, the requirement as to unity of invention was met. The Applicant asserted furthermore that Claim 1 was the broadest statement of the invention set forth in the application and that the remaining claims set forth specific forms of that invention. ... The Applicant requested that Claims 1 to 10 should be searched, that his protest should be considered and that the said additional fees should be reimbursed.

Reasons for the Decision

1. Pursuant to Article 154(3) EPC and Article 9 of the agreement between WIPO and the EPO, the Boards of Appeal of the EPO are responsible for deciding on a protest made by an Applicant against additional search fees charged by the EPO under the provisions of Article 17(3)(a) PCT (OJ EPO 1978, 249). In the present case, the protest is admissible under Rule 40.2(c) PCT because, within the prescribed time limit (Article 17(3)(a) PCT), the Applicant has paid the additional fees under protest, that is accompanied by a reasoned statement emphasising the Applicant's view that the international application complies with the requirement of unity of invention.

2. The ISA has made clear in its invitation that it considers the six subjects specified above as a group of inventions not so linked as to form a single general inventive concept. However, contrary to the provision contained in Rule 40.1 PCT, the invitation sent by the ISA failed to specify in a sufficiently clear way the reasons for the above findings.

3. The Boards of Appeal of the EPO have already decided (W 04/85 of 22 April 1986 and W 07/86 of 6 June 1986, both published in OJ EPO 1987, 63 - 69, and W 09/86 of 11 August 1986, published in OJ EPO 1987, 459 - 464) that the indication of reasons in an invitation pursuant to Article 17(3)(a) and Rule 40.1 PCT is an essential prerequisite for such an invitation to be legally effective. The first cited decision stated (second sentence of second paragraph in numbered section 3) that "in straightforward cases all that may be necessary to substantiate lack of unity is a list of the application's subject-matters ... when the list makes perfectly clear that the application does not relate to a single general inventive concept within the meaning of Rule 13.1 PCT".

The second cited decision clarifies (Headnote, item 2) that such "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". The last cited decision also indicated that the results of searches leading to a posteriori lack of unity objections, being part of the reasons for the alleged non-compliance with the requirement of unity of invention, must be communicated to the Applicant.

4. In the present case, one such exceptional "straightforward case" is recognised by the Board. Indeed, independent Claim 10, which describes a ... cannot be considered, firstly, as being an alternative for the ... device according to Claim 1 and, secondly, as solving the same problem as the subject-matter defined in Claim 1. Therefore, Claim 1 on the one hand and Claim 10 on the other hand are not linked to each other so as to form a single general inventive concept. In this case, the mere listing of the set of Claims 1, 2 on the one hand and Claim 10 on the other, is sufficient to make clear that non-unity is at stake. Therefore, the additional search fee to search the subject- matter of Claim 10 has to be paid.

5. Furthermore, the ISA has cited EP-A-... and has correctly indicated that the subject-matter of Claim 1 of the present application cannot be considered to be novel with respect to this document. ..... EP-A-... therefore describes all the features present in Claim 1 of the present application.

The subject-matter of Claim 1 therefore is not novel (Article 33.1 PCT).

The ISA correctly cited EP-A-... to prove this lacking novelty.

6. Since the subject-matter of Claim 1 is not novel, lack of unity may become apparent (a posteriori) if the remaining claims (2 to 9) leave two or more independent claims without a common inventive concept. The ISA enumerated in its invitation five subjects (Claims 1, 2; 1, 3; 1, 4; 1, 5, 6 and 1, 7) but failed to specify why these subjects did not have the same common inventive concept.

Contrary to the "straightforward case" with respect to non- unity between the Claims 1 and 10, as indicated in above point 4, the Board is of the opinion that the sets of Claims 1, 2; 1, 3; 1, 4; 1, 5, 6 and 1, 7 do not form such an exceptional "straightforward case", since the mere enumeration of the different subjects even together with the statement that the various subjects can no longer be considered as inventive unity, does not make the absence of a single general inventive concept "perfectly clear". On the contrary, it is not clear at all why there should be no common inventive concept linking the subject-matter of these different sets of Claims. For example, ... Furthermore, it becomes quite clear from the description that an object of the invention is to obtain a device which can ... This object of the invention does not exclude, at least prima facie, that it can be obtained by the subject-matter of Claim 2 (1, 2) as well as by the subject-matter of respectively Claims 3 (1, 3), 4 (1, 4), 5 (1, 5) or 7 (1, 7). Without an explanation, the remarks in the invitation do not enable the Applicant and the Board to establish whether the invitation to pay the additional fees was correctly issued.

7. Accordingly, the invitation lacks legal basis with respect to the a posteriori non-unity objection according to above point 6, because it contravenes Rule 40.1 read in conjunction with Rule 13.1 PCT, and thus cannot have any legal effect, with respect to the lack of unity a posteriori as indicated in above point 6. Therefore, the corresponding four additional search fees cannot be retained.

8. ...

ORDER

For these reasons, it is decided that:

Refund of four additional search fees is ordered.