1.2.1 General issues

According to Art. 94(1) EPC, the EPO shall, in accordance with the Implementing Regulations, examine on request whether the European patent application and the invention to which it relates meet the requirements of the EPC. The request shall not be deemed to be filed until the examination fee has been paid. If no request for examination has been made in due time, the application shall be deemed to be withdrawn (Art. 94(2) EPC). If the applicant fails to reply in due time to any communication from the Examining Division, the application shall be deemed to be withdrawn (Art. 94(4) EPC).

R. 70 EPC sets out the practical arrangements for filing the request for examination, including the form and the time limit. R. 70(1) EPC stipulates that the applicant may request examination of the European patent application up to six months after the date on which the European Patent Bulletin mentions the publication of the European search report. The request may not be withdrawn.

In J 21/98 (OJ 2000, 406) the Legal Board stated that the request for examination constituted an autonomous step, which had to be kept quite separate from the (previous) step of filing the European patent application. In particular Art. 94(1) EPC 1973 showed that, according to the EPC, the patent application was not considered as the only necessary step to be taken by the applicant to obtain the grant of a patent, since a further step was necessary, consisting in a written request for examination – that meant a new declaration of intention to continue the grant procedure. Thus the applicant was given the right to know the outcome of the search report before deciding whether to ask for the prosecution of the grant procedure by means of the request for examination, which implied the payment of the related fee, or to drop said procedure.

In J 12/82 (OJ 1983, 221) the Legal Board found that the unequivocal terms of Art. 94 EPC 1973 did not permit any wide interpretation; the Article required that the request be written, filed within a certain period and accompanied by payment of the fee within the same period. It held that the mere payment of the examination fee within the time limits provided for in Art. 94(2) EPC 1973 could not be a substitute for filing the request itself in good time.

In J 4/00 the Legal Board held that a request for examination under Art. 94 EPC 1973 required, over and above payment of the examination fee, that the underlying intention of an applicant that his application should proceed to examination was manifested in a written statement addressed to the EPO and received in time. To qualify as a request for examination, the only reasonable interpretation of the text filed with the EPO had to be that the applicant thereby wanted to inform the EPO that he wished to have the application examined pursuant to Art. 94 EPC 1973.

In T 158/12 the board held there was no provision in the EPC which would allow the payment of multiple examination fees for a patent application. This was in line with the possibilities to argue in the examination proceedings that unity existed or to file divisional applications which allowed the principle of one invention - one examination (and one examination fee for one examination proceedings) to be maintained. Thus for one application, only one examination was to be carried out as the result of the single examination fee paid. Having chosen one invention (or one group of inventions) to be made the subject of examination, this choice could not be altered once examination of that invention had commenced. The board was of the opinion that this approach based on the statutory provisions of the EPC was confirmed in opinion G 2/92 (OJ 1993, 591), which found that "at the examination stage, having regard to the requirement of unity of invention and the fact that only one examination fee can be paid for each application, clearly only one invention in each application is to be examined" (Reasons 2 of the opinion). Hence, the appellant's view that the examination of an application could be based on more than one invention was not supported by this opinion of the Enlarged Board of Appeal.

In T 736/14 the board noted that the EPC contained no explicit provisions about how to proceed if an applicant whose application was non-unitary responded unclearly or in a misleading way to an invitation from the examining division to specify which searched invention it wished to prosecute further. The board held that in such a situation it could not automatically be assumed that the applicant selected the invention covered by the main request for examination. Rather, the examining division had to clarify, e.g. via a further communication, which of the searched inventions the applicant actually wanted it to examine.

In J 17/92 the Legal Board held that allowing consolidation was something both permissible and desirable under the EPC, in accordance with the desire expressed in the preamble to the EPC that such protection be obtainable in the contracting states by means of a single procedure for the grant of patents. Consolidation was not only in the interest of applicants, but also in that of the public not to have to take account of two separate European patents with the same text. The Legal Board noted that the conditions to be imposed on consolidation should not be more restrictive than necessary. It therefore took the view that the condition that the two applications at issue as filed had to be identical was too stringent. In the case in hand, the Legal Board found that if the form of claims with which the applicant wished to proceed in the consolidated applications was acceptable either as an amended set of claims or as being identical to the set of claims as filed, consolidation should be possible. In the Legal Board's view, such an amended set of claims should prima facie not prevent consolidation.