6.3. Applicability of Rule 64, (former) Rule 164(2) EPC or Rule 137(5) EPC

In T 708/00 (OJ 2004, 160) the board pointed out, with reference to preparatory document CA/12/94 cited in the notice from the EPO in OJ 1995, 409, that the purpose of R. 86(4) EPC 1973 (R. 137(5) EPC) was to deal with the situation arising when amended claims relating to unsearched subject-matter were filed in response to the examiner's first communication. It did not apply when the applicant had not paid the search fee in respect of a non-unitary invention in spite of being invited to do so under R. 46(1) EPC 1973 (R. 64(1) EPC), cf. also G 2/92, OJ 1993, 591. These two rules were complementary in nature.

In T 1285/11 (mentioned above), in which no further search fees had been paid in response to the ISA's non-unity objection, the examining division refused the application on the basis of R. 137(5) EPC as well as former R. 164(2) EPC. Referring to T 708/00 (OJ 2004, 160), the aforementioned notice and the Guidelines, the board found that R. 137(5) EPC was not contravened because the subject-matter of the amended claims had already been present in the claims as originally filed. Concerning former R. 164(2) EPC, the board was satisfied that, prima facie, there was a feature that could be regarded as constituting a "special technical feature" (R. 44(1) EPC) establishing unity between "invention 1" and "invention 2" in accordance with Art. 82 EPC. The decision was set aside and the application was remitted for further prosecution.

Reference is also made to chapter IV.B.5. "Amendments relating to unsearched subject-matter – R. 137(5) EPC".