W 0006/97 (Foamed pressure sensitive tapes) of 18.9.1997

Summary of Facts and Submissions

I. Following the filing of international application No. PCT/US.... the EPO, acting as ISA, on 7 October 1996 issued an invitation to pay within 45 days two additional search fees (Article 17(3)(a) and Rule 40.1 PCT).

II. The said international application contained 47 claims; Claims 1, 6, 18, 25, and 36 read as follows:

Independent Claims 40, 42, 44, and 46 relate to methods for joining at least one plastic surface to a substrate using a pressure sensitive adhesive foam according to Claims 1, 18, 25, or 36, respectively; Claims 2 to 5, 7 to 17, 19 to 24, 26 to 35, 37 to 39, 41, 43, 45, and 47 are dependent claims.

The invitation to pay additional search fees (IPAF) stated that the international application related to three groups of inventions as follows:

Group 1: Claims 1 to 5, 18 to 24, 34, 35, 40 to 43;

Group 2: Claims 6 to 17, 25 to 33, 44, 45;

Group 3: Claims 36 to 39, 46, 47.

The IPAF further stated that these three groups were not so linked as to form a single inventive concept.

The ISA observed that the general technical idea of the above quoted independent claims was a pressure sensitive foam adhesive and that foam adhesives with the common inventive concept of having a peel adhesion greater than 1N/cm (ASTM-D903) were known from the document

(1) EP-A-84220.

III. On 21 November 1996 the Applicant paid two additional search fees under protest (Rule 40.2(c) PCT). In support of the protest the Applicant submitted in essence that the alleged three groups of inventions shared common technical features which distinguished the invention over the prior art.

IV. On 18 April 1997, the ISA informed the Applicant that, after having performed the prior review pursuant to Rule 40(2)(e) PCT, it considered the IPAF as justified and invited the Applicant to pay the protest fee within one month. The ISA's Review Panel stated in essence

- that the only feature present in all independent claims was to provide a pressure sensitive adhesive foam (PSAF) showing a peel strength of more than 1 N/cm which was therefore to be considered as the technical problem underlying the inventions of the international application;

- that this problem was not novel over document (1); and

- that therefore there existed no common technical feature linking the three distinct (groups of) inventions.

On 20 May 1997 the Applicant paid the protest fee.

Reasons for the Decision

1. The protest is admissible.

2. According to Rule 13.1 PCT, the international application shall relate to one invention only or to a group of inventions so linked as to form a single inventive concept. If the ISA considers that the claims lack this unity, it is empowered, under Article 17(3)(a) PCT, to invite the Applicant to pay additional fees.

3. Lack of unity of invention may be directly evident a priori, i.e. before the examination of the merits of the claims in comparison with the state of the art revealed by the search (see, e.g. decision W 6/90, OJ EPO 1991, 438). Alternatively, having regard to decision G 1/89 of the Enlarged Board of Appeal (OJ EPO 1991, 155), the ISA is also empowered to raise an objection a posteriori, i.e. after having taken into consideration the prior art revealed by the search.

4. In the present case, the ISA's non-unity objection was based on the subject-matter disclosed in document (1) (see above points and II. and IV.) and was thus made a posteriori.

5.1 When deciding on unity of invention, it is mandatory under Rule 13.1 PCT to determine whether or not a group of inventions claimed in an international application forms a single general inventive concept.

5.2 Rule 13.2 PCT, which defines the method for determining whether the requirement of unity of invention is satisfied, states:

"Where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art."

5.3 The determination of unity of invention must be made

- without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim (Rule 13.3 PCT), and

- on the basis of the contents of the claims as interpreted in the light of the description and of the drawings, if applicable [emphasis added] (Part 1(b) of Annex B of the Administrative Instructions under the PCT (PCT Gazette 24/1996, 9474), which are binding not only on the ISA but also on the Board of Appeal acting as the "three-member board" according to Rules 40.2(c) and (e) PCT, see decision G 1/89 of the Enlarged Board of Appeal, OJ EPO 1991, 155).

6.1 In the Board's judgement, the "contribution which each of the claimed inventions, considered as a whole, makes over the prior art" comprises in particular the technical effects achieved as compared with the prior art. This is confirmed by Part 1(f) of Annex B of the Administrative Instructions under the PCT, relating to a situation in which several alternatives are claimed (the so-called "Markush practice"). According to paragraph (f)(i)(A) of Annex B one criterion which has to be fulfilled for a finding of unity of invention in such a case is that all the claimed alternatives have a common property or activity.

6.2 The relevant effects, i.e. the outcome or results achieved by the group of inventions as claimed, will normally be apparent from the technical problem or problems as stated in or deducible from the description (see also W 6/90, No. 3.1 of the Reasons for the Decision, OJ EPO 1991, 438). Therefore, and according to the established case law of the Boards of Appeal, determining unity of invention requires as a precondition an analysis of the technical problem or problems underlying the respective group of inventions (see, e.g. W 11/89, No. 4.1 of the Reasons for the Decision, OJ EPO 1993, 225).

6.3 Establishing the technical problem underlying a claimed invention or group of inventions in relation to the state of the art should start, as a rule, from what is considered in the description as having been achieved by the claimed invention, since claims directed to compositions of matter at least are normally silent on the technical effects to be achieved by such compositions.

6.4 However, as soon as the search reveals prior art which is clearly more relevant than that already acknowledged in the description of the international application, it has to be investigated as to what is to be considered as the particular technical problem in view of both the disclosure of the international application as a whole and the prior art thus revealed (W 6/91, No. 4 of the Reasons for the Decision, not published in the OJ EPO). Unity of invention can be assessed only after the technical problem has been determined in such a manner (see also W 3/92, No. 3 of the Reasons for the Decision, not published in the OJ EPO, and the decisions there cited).

7.1 No such analysis is contained in the IPAF, nor is the result of such an analysis evident from the circumstances of the case. In particular, the ISA did not define the technical problem which would have allowed the following conclusion to be drawn in the IPAF:

"The general technical idea of the independent claims 1, 6, 18, 25, 36 is: A pressure sensitive adhesive".

7.2 In this situation the Board is unable to accept, as a valid argument in support of a finding of lack of unity of invention, the ISA's further statement in the IPAF that foam adhesives with the common inventive concept of having a peel adhesion greater than 1 N/cm (ATM-D903) are known from document (1). This statement, while being correct as such, cannot contribute to the definition of the technical problem of the present application, since it relates solely to a feature characterising the claimed solution (see points 6.2 to 6.4). This statement cannot therefore be accepted as establishing the absence of a single common inventive concept in the subject-matter of the present international application.

7.3 For the same reason, the Board cannot concur with the ISA Review Panel's approach to defining the technical problem (see above point IV.), since, instead of proceeding in the way as explained above, it also relied solely on a feature of the claims.

8. It follows from Rule 40.2(c) PCT that in protest proceedings the Board can only review whether retaining the additional fees is justified, having regard to the reasons stated by the ISA in the IPAF and to the submissions made in support of the protest. The Board cannot investigate whether an objection relating to unity of invention would have been justified for reasons other than those given in the IPAF (see W 3/93, No. 4 of the Reasons for the Decision, OJ EPO 1994, 931). The Board therefore holds that the objection of lack of unity of invention was not justified and that the two additional search fees and the protest fee cannot be retained (Rule 40.2(c) and (e) PCT).

ORDER

For these reasons it is decided that:

Reimbursement of the additional fees and of the protest fee is ordered.

The Registrar: The Chairman:

E. Görgmaier A. Nuss