3. Assessing lack of unity of invention

In T 1414/18, the grounds in the examining division’s refusal decision consisted of a mere reference to its final communication under Art. 94(3) EPC, in which it had continued to maintain its objection of non-unity, stated that the application would be refused and expressed the view that the applicant’s request for a refund of the second search fee would also be refused. The applicant withdrew its request for oral proceedings and requested an appealable decision "according to the state of the file".  The board disagreed with the examining division’s approach to the question of unity. It was only if the application related to more than one "invention" that the notion of "a single general inventive concept" (Art. 82 EPC) and the concept of the "same or corresponding special technical features" (R. 44(1) EPC) had to be assessed for this purpose – see also Catchword (1). It first had to be determined whether the application covered only one or several "inventions". The underlying "invention(s)" was (were) to be established on the basis of the technical problem(s) to be solved according to the description (e.g. W 11/89, OJ 1993, 225; W 6/97; T 173/06; T 1888/09; also Guidelines for Examination of November 2017, e.g. F-V, 8, second paragraph, and 8.1, penultimate sentence). From the board’s assessment, the original application had to be considered as relating to one invention only. The fact that the main aspect of the invention was predominantly covered by one (more limited) independent claim did not automatically mean that the complementary (broader) independent claim related to another invention. In particular, it did not mean that two different searches had to be carried out to cover both. A complete search should not be restricted to the claims, regardless of how broad or limited they were, but give due consideration to the underlying description and the drawings (Art. 92 EPC). The board concluded that both claims 1 and 2 as originally filed and claims 1 and 2 of the main request (with only added reference signs and minor re-wording) were unitary (Art. 82 EPC).  Concerning the requested fee refund, the board held that the decision to refuse a patent application may be understood to implicitly contain the decision to refuse the refund of a further search fee, if the examining division's intent is clear – see also Catchword (2). Although a decision on the refund of further search fees should be indicated in the order of the written decision (e.g. T 756/14), the examining division's intention to refuse the request had been clear from their latest communication. A further search fee was to be refunded by the examining division or the competent board (R. 64(2) EPC, R. 100(1) EPC) if the search division’s invitation to pay it was unjustified. The assessment was to be based on the facts and arguments presented therein and on the originally filed claims (inter alia T 188/00, T 1476/09, T 2526/17). As unity of invention on the basis of the originally filed claims had been incorrectly denied by the examining division, the fee was to be refunded.

According to T 756/14, in the order of its decision on a requested refund of (further) search fees, the examining division must clearly specify the request which has been decided on, the extent to which it grants that request and orders a refund, and the outcome for any remaining parts of the request. Allowing a separate appeal against its interlocutory decision under Art. 106(2) EPC is a constitutive decision of the examining division which establishes the possibility of challenging the interlocutory decision by way of an appeal, and therefore it too should be included in the order.