3. No meaningful search possible 

In addition to the reasons discussed in B‑VIII, 1, an invitation under Rule 63(1) may be issued and the search subsequently limited under Rule 63(2) because the application falls so short of the relevant EPC requirements that it is impossible to carry out a meaningful search on all or some of the claims or part of a claim. The search division then applies the procedure under Rule 63 (see B‑VIII, 3.1 to B-VIII, 3.4 and OJ EPO 2009, 533).

Rule 63 relates only to whether the search is practicable and not to whether its results are likely to be relevant in the later examination proceedings. Even if a search will not produce any result that could be used in examination proceedings, it cannot be refused on the basis of Rule 63 (see T 1242/04).

What is or is not "meaningful" is a question of fact to be answered by the search division. Its finding may change in the light of any reply from the applicant to the invitation under Rule 63(1) (see B‑VIII, 3.2). How the search division exercises its discretion will depend on the facts of the case. A restriction of the search must be carefully considered. There are cases where a search is impossible in practice in view of the failure to meet the EPC requirements, for example a fundamental lack of clarity or the absence of any technical character whatsoever. However, the word "meaningful" must always be construed reasonably, i.e. Rule 63 cannot be invoked simply because a search is difficult or does not produce results relevant for subsequent examination proceedings.

As there is no legal provision requiring that applicants draft their application in a way that makes searching easier, "procedural economy" cannot be used as a reason, or part of a reason, for issuing a partial search report (see also T 1020/98).

The following – non-exhaustive – examples illustrate where Rule 63 can apply:

(i)claims lacking support; insufficient disclosure 

An example is a claim so broadly formulated that its scope is at least to some extent speculative, i.e. not supported by the disclosure of the application. It is then so broad that a meaningful search cannot be carried out over its whole scope but only on the basis of the narrower, disclosed invention. In extreme cases, this may mean a search covering only (one or more of) the specific examples disclosed in the description. The procedure under Rule 63(1) can then be applied (see B‑VIII, 3.1 to B‑VIII, 3.4) on the basis of a failure to meet the requirements of sufficiency of disclosure and support set out in Art. 83 and Art. 84 (see F‑III, 1 and F-III, 2, and F‑IV, 6). However, the search division needs to bear in mind that whether these requirements are met has to be assessed from the point of view of the person skilled in the art.

(ii)claims lacking conciseness 

An example is where there are so many claims, or so many possibilities within a claim, that it is unduly burdensome to determine the subject-matter for which protection is sought (however, see B‑VIII, 4 on multiple independent claims in the same category). A complete search (or even any search at all) may then be impossible in practice. Again, it may be appropriate to apply Rule 63 and then issue a partial search report (following the procedures described in B‑VIII, 3.1 to B-VIII, 3.3) or a declaration of no search, on the grounds that the claims are so lacking in conciseness that a meaningful search is impossible (see Art. 84; F‑IV, 5).

(iii)claims lacking clarity 

An example is where the parameter chosen by the applicant to define the invention makes a meaningful comparison with the prior art impossible, for example because the prior art did not use the same parameter or did not use any parameter at all. The applicant's parameter may then lack clarity (see Art. 84; F‑IV, 4.11) and it may even be so unclear that a meaningful search of the claims, an individual claim or part of an individual claim is impossible. It may then be appropriate to apply Rule 63 and issue a partial search report (or, in exceptional cases, no search report at all) under Rule 63(2) (following the procedures described in B‑VIII, 3.1 to B-VIII, 3.3) after restricting the search to the worked examples, in so far as they can be understood, or to the way in which the desired parameter is obtained (any reply from the applicant to the invitation under Rule 63(1) would then be taken into account as described in B‑VIII, 3.2 to determine the subject-matter to be searched).

(iv)claims contravening Art. 76 or Art. 123(2)

Rule 63 may also apply in the following cases of claims containing added subject-matter (see B‑VIII, 6):

– claims in divisional applications contravening Art. 76

– applications for which the claims were filed after the filing date and which contravene Art. 123(2) or

– Euro-PCT applications for which amended claims were filed as a basis for the supplementary European search and which contravene Art. 123(2).

These examples are not exhaustive (see also B‑VIII, 6). The basic principle is that it needs to be clear and transparent for both the applicant and third parties what has and has not been searched.

How these Rule 63 cases are handled in subsequent examination proceedings is dealt with in H‑II, 5 and H‑IV, 4.1.1.