W 0031/88 (Beta blockers) of 9.11.1988

Summary of Facts and Submissions

1. On 6 April 1988 the applicants filed international patent application .... . The European Patent Office is a designated Office within the meaning of Article 2(xiii) PCT. Claim 1 of this application relates to compounds with the following formulae: in which R represents a 3-tert-butylamino-2-hydroxy-propyl radical.

II. On 19 July 1988 the European Patent Office, as the International Searching Authority (ISA), sent the applicants in accordance with Article 17(3)(a) and Rule 40.1 PCT an invitation to pay two additional fees on the grounds that the application did not meet the requirement of unity of invention (Rule 13.1 PCT). It considered that Claim 1, the wording of which was complicated owing to the dissimilarity of the claimed compounds, was not, as a result, clear and concise as required by Article 6 PCT; since clarity goes hand in hand with a single, clearly defined, general inventive concept, the lack of clarity meant that the following three subjects had to be distinguished, each one representing a single, clearly defined, general inventive concept: (a) compounds with formulae I, IV, V; (b) compounds with formula II; (c) compounds with formula III.

III. On 17 August 1988 the applicants paid the two additional fees under protest in accordance with Rule 40.2(c) PCT. They argued primarily that the claimed compounds all had the same general formula (1,3-dichlorobenzene substituted in positions 2 and 5) and all had the same beta-blocking and alpha-antagonistic properties. On this basis they asked for both additional fees to be refunded. In the alternative they maintained that the claimed compounds could be reorganised in two groups comprising, on the one hand, derivatives of clonidine substituted in the para position by a phenyl ring or position 4 by an imidazolidine ring and, on the other, derivatives of 3,5-dichloro-oximinoacetophenone substituted in position 4 by a phenyl ring. On this basis they asked for one of the additional fees to be refunded.

Reasons for the Decision

1. Under Article 154(3) EPC and Article 9 of the Agreement between WIPO and the EPO, the EPO Boards of Appeal are responsible for deciding on a protest made against the fixing of additional fees under the provisions of Article 17(3)(a) PCT (OJ EPO 1985, pp. 320, 324).

2. The invitation to pay and the protest made meet the requirements laid down in Rule 40 PCT. They are therefore admissible.

3. As explained in II above, the objection of lack of unity raised by the ISA is based on the principle that Claim 1 is not clear and concise as required by the second sentence of Article 6 PCT. As this Board pointed out in Decision W 03/88 of 8 November 1988, the PCT is essentially procedural in nature. The procedure before the ISA is governed by Article 17 PCT. The object of this procedure is the production of the international search report as required by Article 18 PCT: the duties of the ISA are purpose- related solely to the carrying out of the international search and the production of the ensuing report. Article 6 PCT lists the essential requirements to be met by claims, in particular that they must be clear and concise. It is plain from Article 17 PCT that the ISA is not competent to examine these requirements as such. The limits of the ISA's competence and obligations vis-à-vis claims are laid down in Article 17(2)(a)(ii) PCT: if it considers that the claims do not meet the requirements laid down in Article 6 PCT, "to such an extent that a meaningful search could not be carried out", the ISA so declares and notifies the applicant and the International Bureau that no international search report will be established (Board's emphasis). In other words consideration of the clarity and conciseness of claims by the ISA is limited to whether they can be sufficiently understood to permit a meaningful search to be carried out. Under Article 17 PCT the ISA is not competent to examine the claims and decide whether they meet the requirements of Article 6 PCT. Furthermore within Article 17 PCT itself clarity of claims is quite separate from the question of unity of invention and no connection is made between the two.

4. In the present case, it follows that the ISA was not competent to decide that Claim 1 did not meet the requirements of Article 6 PCT, either from the point of view of Article 17(3)(a) PCT or from any other. The Board therefore cannot accept alleged clarity and conciseness - the reasons given in the invitation - as reasons for an objection based on lack of unity. This in itself is sufficient grounds for setting aside the invitation.

5. The Board nevertheless considered that it ought to look at this international application from the point of view of unity of invention. It finds no reason to doubt that all the claimed compounds share a common inventive concept since they all possess the same combination of beta-blocking/alpha-antagonistic properties. In these circumstances the unity of the invention cannot be questioned.

ORDER

For these reasons, it is decided that:

1. the invitation to pay additional fees dated 19 July 1988 is set aside;

2. the two additional fees paid under protest are to be refunded.