| European Case Law Identifier: | ECLI:EP:BA:2000:W000398.20000417 | ||||||||
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| Date of decision: | 17 April 2000 | ||||||||
| Case number: | W 0003/98 | ||||||||
| Application number: | - | ||||||||
| IPC class: | C12N 15/54 | ||||||||
| Language of proceedings: | EN | ||||||||
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| Title of application: | Regulating metabolism by modifying the level of trehalose-6-phosphate | ||||||||
| Applicant name: | MOGEN International N.V. | ||||||||
| Opponent name: | - | ||||||||
| Board: | 3.3.04 | ||||||||
| Headnote: | - | ||||||||
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| Keywords: | Request for refund allowed in full under the prior review: no protest fee due | ||||||||
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Summary of Facts and Submissions
I. International application PCT/EP 97/02497 was filed on 2. May 1997.
II. On 8 October 1997, the EPO acting as International Searching Authority (ISA) informed the applicant that the application did not comply with the requirement of unity of invention, as it comprised 14 groups of inventions which were not linked by a single general inventive concept in accordance with Rule 13.1 PCT. The applicant was invited to pay 13 additional search fees within 30 days pursuant to Article 17(3)(a) PCT and Rule 40.1 PCT.
III. On 18 November 1997, the applicant paid all additional search fees and filed a protest pursuant to Rule 40.2(c) PCT. In his reasoned statement accompanying the protest, he submitted arguments for his position that the groups of inventions 1 to 9 and 14. as identified by the ISA were one and the same invention. No further arguments were presented with regard to the other groups of inventions.
The applicant requested reimbursement of the nine search fees paid for the groups of inventions 2 to 9 and 14.
IV. In its communication of prior review under Rule 40.3(e) PCT dated 29 January 1998, the ISA informed the applicant that the groups of inventions 1 to 9 and 14 were indeed to be considered as one and the same invention. The reimbursement of nine search fees requested by the applicant was ordered. The applicant was invited to pay the protest fee within one month. The fee was paid on 16 February 1998.
Reasons for the Decision
1. Rule 40.2(c) PCT offers the applicant the possibility to pay the additional fee under protest, "that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention...". Thus, when additional search fees are paid under protest, there has to be a reasoned statement as to why the groups of inventions in respect of which the refund of search fees is requested are so linked with the remainder of the application so as to form a single general inventive concept.
2. In the present case, no arguments were submitted as to why the groups of inventions 10 to 13 should be considered as being linked together and to the groups of inventions 1 to 9 and 14 by a single general inventive concept. Consequently, the refund of the search fees paid for these groups of inventions was not requested.
3. The applicant's request relating to groups 1 to 9 and 14. was allowed in full under the prior review by the order to refund 9 additional search fees. Therefore, the protest proceedings were disposed of in favour of the applicant and the applicant was not adversely affected by the result of the prior review. There was no basis for a further examination of the protest. Hence, the applicant should not have been invited to pay the protest fee. Since the ISA was not in a position to provide the service for which the fee was charged, the fee was not due (J 14/85, OJ EPO 1987, 47, Reasons point 6).
ORDER
For these reasons it is decided that:
The reimbursement of the protest fee is ordered.
