6.2 7.2 Restriction to an unsearched invention

If not all of the claimed inventions have been searched, in accordance with G 2/92 the applicant must restrict the claims to one of the searched inventions. Thus, if in reply to the search opinion the applicant then restricts the claims to one of the originally claimed inventions which has not been searched, the examining division will write a first communication repeating the lack-of-unity objection raised in the search opinion. Any arguments of the applicant must be duly considered and dealt with in the communication.

If the application is restricted to an unsearched but originally claimed invention, it can be refused under Rule 64 in line with G 2/92 (subject to the applicant's rights under Art. 113(1) and Art. 116(1)).

Rule 137(5) cannot be invoked. It does not apply when the applicant has not paid the search fee in respect of a non-unitary invention relating to the originally filed claims.

If the application is a Euro-PCT application (see also H‑II, 7.4 H‑II, 6.4) the examining division, depending on the case:

– either objects under Rule 164(2)(c) to the restriction of the claims to an invention searched neither (on grounds of lack of unity) by the EPO as (Supplementary) International Searching Authority nor as part of a search under Rule 164(2)(a),

– or objects under Rule 164(1) in line with G 2/92 in the context of a supplementary search in the European phase (see B‑II, 4.3.2, B‑VII, 2.3 and E‑IX, 4.2).

In both cases, if the applicant declines to limit the claims to a searched invention, the application is refused under Rule 164 in accordance with G 2/92 (subject to the applicant's rights under Art. 113(1) and Art. 116(1)).

The objection under Rule 164(2)(c) mentioned above is drafted in the communication sent under Rule 164(2)(b) issuing the results of any additional search. If the applicant does not reply to the invitation to pay additional search fees under Rule 164(2)(a), they do not receive a communication under Rule 164(2)(b). In this case, the examining division issues a communication under Art. 94(3) and Rule 71(1) and Rule 71(2) inviting the applicant to limit the application under Rule 164(2)(c) before the application can be refused.

Concerning the application of G 2/92, it is to be kept in mind that the prohibition on pursuing an application for subject-matter for which no search fees have been paid applies to inventions; it does not apply to features which were originally claimed with a different invention and had not been searched, but which were originally disclosed in combination with the searched invention or group of inventions (see T 998/14).