Pages 591-597

BOARDS OF APPEAL

Decisions of the Enlarged Board of Appeal

Opinion of the Enlarged Board of Appeal dated 6 July 1993 - G 2/92

(Draft Text)1

Composition of the Board:

Headword: Non-payment of further search fees

Article: 82 EPC

Rule: 46 EPC

Keyword: "Lack of unity of invention - consequence of non-payment of further search fees"

Headnote

An applicant who fails to pay the further search fees for a non-unitary application when requested to do so by the Search Division under Rule 46(1) EPC cannot pursue that application for the subject-matter in respect of which no search fees have been paid. Such an applicant must file a divisional application in respect of such subject-matter if he wishes to seek protection for it.

Summary of the Proceedings

I. Pursuant to Article 112(1)(b) EPC, the President of the EPO has referred the following question of law to the Enlarged Board of Appeal:

Can an applicant who fails to pay further search fees for a non-unitary application when requested to do so by the Search Division under Rule 46(1) EPC pursue that application for the subject-matter in respect of which no search fees have been paid or must he file a divisional application for it?

In his letter of referral, the President has indicated that Technical Boards of Appeal 3.5.1 and 3.2.1 have given different decisions on the above question, in their respective decisions T 178/84 (OJ EPO 1989, 157) and T 87/88 dated 29 November 1991 (OJ EPO 1993, 430).

The letter of referral discusses the contents of these two decisions and the extent to which they deviate from each other as to the consequences of an applicant not paying an additional search fee which has been requested under Rule 46(1) EPC; reference is also made to the current practice within the EPO in this respect, which is set out in the Guidelines, C-VI, 3.2a, and which is based upon the principles stated in decision T 178/84.

II. In decision T 178/84, Technical Board of Appeal 3.5.1 considered the effect of Rule 46(1) EPC when a further search fee has been requested but not paid, and the application has therefore duly proceeded to substantive examination under Article 96 EPC on the basis of a partial European search report for the invention first mentioned in the claims. On the basis of relevant provisions of the EPC, this Board considered that it is the general intention of the EPC to leave it to the applicant to decide with which subject-matter a patent application is to proceed, but that it "lies clearly within the intention of Rule 46(1) EPC to regard subject-matter as abandoned in a particular patent application if ... the further search fee is not paid for this subject-matter within the time limit...". The Board went on to explain that "otherwise Rule 46(1) EPC would not have any legal effect and any invention for which the required search fee was not paid could be pursued in the respective patent application just in the same way as an invention for which it was duly paid. This would make no sense and therefore be against the spirit of Rule 46(1) EPC".

It seems that the word "abandoned" as used in this decision is not intended to refer to a public renunciation of the applicant's desire to obtain patent protection for the relevant subject-matter but is used in a narrower sense simply to refer to the fact that protection for the relevant subject-matter per se within that particular patent application is no longer possible.

III. The effect of Rule 46(1) EPC was also considered by Technical Board of Appeal 3.2.1 in its decision T 87/88. In the case which is the subject of this decision, the Search Division had regarded the claims originally filed with the European patent application as relating to two separate inventions contrary to Article 82 EPC, and had therefore requested payment of a further search fee under Rule 46(1) EPC, which the applicant did not pay. Accordingly, the Search Division had drawn up a search report on the invention which was first mentioned in the claims.

After receipt of the search report, the applicant had filed two further sets of claims as a main request and an auxiliary request respectively. Following examination of the application pursuant to Article 96 EPC, the Examining Division refused the application under Article 97 EPC, on the ground that the subject-matter of the claims of such main and auxiliary requests was not concerned with the same invention as had been first mentioned in the claims originally filed with the application, which had been the only subject of the European search report, and that the subject-matter of such main and auxiliary requests could only be pursued in the context of a divisional application pursuant to Article 76 EPC.

In its decision concerning the applicant's appeal from the Examining Division's decision, Technical Board of Appeal 3.2.1 expressly disagreed with the principles expressed in decision T 178/84 and quoted in paragraph  II above, primarily on the basis that if Rule 46(1) EPC had intended that the consequence of non-payment by the applicant of additional search fees requested by the Search Division should be the loss of the applicant's right to choose which of the disclosed subject-matters in the original application would be the subject of the claims in that application, it would have said so expressly; on the contrary, however, the third sentence of Rule 46(1) EPC simply says that the consequence of non-payment of the additional search fees is that the Search Division shall draw up the European search report only for those parts of the application which relate to inventions in respect of which search fees have been paid.

Reasons for the Opinion

1. Rule 46 EPC is part of the procedural system which begins when a European patent application is filed in accordance with the requirements of Article 78 EPC and is accorded a date of filing pursuant to Article 80 EPC. Article 78(2) EPC prescribes that each such application is subject to the payment of a filing fee and a search fee, within one month of filing; in the absence of such payment, the application is deemed to be withdrawn pursuant to Article 90(3) EPC.

Provided an application has been accorded a date of filing and is not deemed to be withdrawn, Article 92 EPC requires that the Search Division shall draw up the European search report on the basis of the claims of the application (with due regard to the description and any drawings).

Rules 44 to 47 EPC implement this provision. In particular, Rule 46(1) EPC is concerned with the situation which arises when the Search Division considers that the application does not comply with the requirement of unity of invention in Article 82 EPC, and therefore contains subject-matter relating to more than one invention. In this situation, a partial European search report has to be drawn up on those parts of the application which relate to the invention (or group of inventions within the meaning of Article 82 EPC) which is first mentioned in the claims. Furthermore, the applicant has to be informed that if the search report is to cover the other invention or inventions which are the subject-matter of the application, an additional search fee must be paid for each further invention involved, within a fixed period of time. Depending upon the additional fees which have been duly paid, the Search Division then has to draw up the search report "for those parts of the European patent application which relate to inventions in respect of which search fees have been paid".

According to Rule 86(1) EPC, an applicant may not amend the contents of an application (except in respect of formal deficiencies under Rule 41 EPC) before receiving the European search report. Following receipt of the European search report and before receipt of a first communication from the Examining Division, however, an applicant may amend the application pursuant to Rule 86(2) EPC.

Following publication of the application and the European search report pursuant to Article 93(2) EPC, and following the filing of a request for examination and payment of an examination fee pursuant to Article 94 EPC, the application is then examined by an Examining Division as to whether it meets the requirements of the EPC (including the requirement in Article 82 EPC for unity of invention). If the Search Division had previously considered that the application did not comply with the requirement of unity of invention, and had requested and received payment of one or more additional search fees, then during the examination stage in accordance with Rule 46(2) EPC, the applicant may request and receive a refund of such additional search fees if the Examining Division finds (contrary to the Search Division) that the application does meet the requirement of unity of invention in Article 82 EPC.

Whereas Rule 46(1) EPC provides for the possibility that an applicant may pay more than one search fee in respect of a particular application, there is only provision for the payment of one examination fee in respect of an application.

2. It is clear from the above procedural system that in order to proceed to grant, a European patent application is required to contain claims relating to one invention only.

At the search stage, if an application as filed is considered by the Search Division to relate to more than one invention, a search fee may be paid for each such invention, and the search report will be drawn up only in respect of inventions for which search fees have been paid. 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 for conformity with the patentability and other requirements of the EPC.

In the view of the Enlarged Board, it is also clear from the above procedural system that the invention which is to be examined for patentability must be an invention in respect of which a search fee has been paid prior to the drawing up of the European search report. As outlined above, Part IV of the EPC (containing Articles 90 to 98 EPC which concern the "Procedure up to grant") envisages that an application progresses after filing from the Search Division to the Examining Division. An object of Rule 46 EPC is to implement this procedure by ensuring that an appropriate extent of search is completed in respect of each individual application before each application is examined by the Examining Division. To this end, in response to an invitation from the Search Division to pay one or more further search fees in respect of one or more further inventions to which the application relates, an applicant must pay such further search fees if he wishes to ensure that one of the further inventions could become the subject of the claims of that application. That is the proper interpretation of Rule 46(1) EPC in its context.

As discussed in paragraph 1 above, at the examination stage the applicant may contest the Search Division's opinion as to lack of unity and request a refund under Rule 46(2) EPC, and if this request is upheld by the Examining Division (or by a Board of Appeal in any appeal), the entire subject-matter may remain the subject of the claims. But if the Search Division considers (subject to a subsequent possible refund following a request under Rule 46(2) EPC), that the application as filed relates to more than one invention contrary to Article 82 EPC, the payment by the applicant of further search fees in respect of each further invention ensures that after receipt of the European search report, the applicant may put forward in the claims of that application, by way of amendment under Rule 86(2) EPC, whichever further invention he chooses for subsequent examination by the Examining Division, provided the respective fee has been paid so that the European search report has been drawn up with reference to such invention.

In this situation the applicant also may file a divisional application in respect of each further invention to which the application relates. Although each such divisional application is subject to payment of inter alia a further search fee (Article 76(3) EPC), such further search fee is refundable fully or in part under Article 10 of the Rules relating to Fees, depending upon the extent to which the Search Division benefits from the earlier search report on the parent application. Thus the payment by the applicant of further search fees in response to an invitation by the Search Division under Rule 46(1) EPC does not prejudice the applicant in any way. It simply gives him maximum subsequent flexibility in seeking protection for any or all of the further inventions to which his original application relates, in the light of the results of the search report.

If the applicant chooses not to pay an additional search fee in respect of a further invention in response to an invitation from the Search Division, however, he cannot thereafter put forward that invention as the subject of the claims in that application. Such invention can only be protected per se following the filing of a divisional application under Article 76 EPC, so that a further European search report is drawn up in respect of that invention as part of the procedure of the divisional application.

3. Consequently, in the circumstances of decision T 87/88 (referred to in paragraph III above), the failure by the applicant to pay the additional search fee as requested by the Search Division should have resulted in the applicant being obliged to seek protection for the second invention in a divisional application, as held by the Examining Division in that case. In such circumstances, a review of the correctness of the Search Division's request for an additional search fee is not in accordance with Rule 46 EPC on its proper interpretation.

It may be added that a narrow and literal interpretation of Rule 46(1) EPC without proper regard to its context would result in the Examining Division (or a Board of Appeal in any appeal) having to refer the case back to the Search Division for one or more further searches, without payment of corresponding further search fees. This is contrary to the procedural system intended by the EPC, as previously discussed.

For the above reasons, the opinion of the Enlarged Board of Appeal is that the referred question should be answered as follows:

An applicant who fails to pay the further search fees for a non-unitary application when requested to do so by the Search Division under Rule 46(1) EPC cannot pursue that application for the subject-matter in respect of which no search fees have been paid. Such an applicant must file a divisional application in respect of such subject-matter if he wishes to seek protection for it.