T 1285/11 (Polymorphs/PFIZER) 15-12-2011

1. The appeal is admissible.

2. Refusal based on Rule 137(5) EPC

The examining division inter alia relied on Rule 137(5) EPC in refusing the present main request, citing the text of this rule according to which "amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept".

The board notes that this wording is the same as that of Rule 86(4) EPC 1973. This rule was introduced to give the EPO the means to react appropriately when the applicant dropped existing claims and replaced them with originally non-unitary subject-matter extracted from the description (see the Notice published in OJ EPO 1995, 409, in particular pages 420 and 421, point 2; see also Guidelines for Examination, C-VI, 5.2(ii), in particular the second paragraph of this section). This is also reflected in the passage of the Guidelines for Examination cited by the examining division in this context, namely, chapter III, point 7.11.1(iv), which states that, "if the claims to be examined relate to an invention which differs from any of the originally claimed inventions and which does not combine with these inventions to form a single inventive concept, an objection under Rule 137(5) should be raised in the first communication" (emphasis added).

Indeed, according to well-established case law, "Rule 86(4) EPC 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" (see T 708/00, OJ EPO 2004, 160, point 7, see also points 5, 6 and 8).

In the present case, the subject-matter of the amended claims according to the main request was already present in the claims as originally filed (see claims 2 to 4, 17 to 19, 22 to 25). Therefore, the main request does not contravene Rule 137(5) EPC and may not be refused on this basis.

3. Refusal based on Rule 164(2) EPC

3.1 Rule 164(2) EPC, which entered into force with the EPC 2000 on 13 December 2007, applies to the present application, since the international application on which it is based (see above point I) was filed on 25 August 2008. This rule requires that, "where the examining division finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the international search report ..., it shall invite the applicant to limit the application to one invention covered by the international search report..." (emphasis added).

The board notes that it can already be deduced from the juxtaposition of the expressions "an invention not covered by the international search report" and "one invention covered by the international search report" that, in order for Rule 164(2) EPC to be applicable, the respective non-searched and searched inventions being referred to cannot belong to a single invention and must indeed be non-unitary with respect to one another. As aptly analysed in the decision of the Legal Board of Appeal J 3/09, it is also implied by the wording of Rule 164(2) EPC, giving the EPO the power to invite the applicant to limit the application to one invention covered by the international search report, that where there is in fact only "one" invention there is no sanction (see Reasons, point 3.5.7).

According to the practice of the EPO, as set out in the Guidelines for Examination (C-III, 7.10, first paragraph) and explained in detail in decision J 3/09 (see Reasons, points 3.5.4 to 3.5.7, in particular point 3.5.6), the responsibility for establishing whether or not the application meets the requirements of unity of invention ultimately rests with the examining division, and the opinion of the EPO acting as the ISA on lack of unity is not final or binding on the examining division. The fact that the applicant did not pay further search fees or protest fees in the international phase cannot therefore be seen as a tacit agreement with the findings of non-unity of the ISA, as submitted by the examining division in the decision under appeal.

The situation referred to by the examining division, whereby subject-matter in respect of which a search fee has not been paid can only be pursued in a divisional application, presupposes that the searched and non-searched inventions are in fact found to be non-unitary when the examining division upon review agrees with the opinion of the search division (see decision J 3/09, Reasons, points 5.1 to 5.7 and references therein to decisions G 2/92 and T 631/97; see also Guidelines for Examination, C-III, 7.10, third and fourth paragraphs, and 7.11.1(ii),(iii)).

To the extent that an objection of non-unity raised by the ISA turns out to be unjustified, the applicant is entitled as of right to have the whole subject-matter of his unitary invention searched. If need be, an additional search would have to be performed (see Guidelines for Examination, C-III, 7.10, third paragraph, last sentence, and 7.11.1(v); decision J 3/09, Reasons, points 3.5.6 and 5.2), regardless of whether or not this might involve an additional effort.

With respect to the examining division's reference to the Guidelines for Examination, chapter III, point 7.11.4 (cf. decision under appeal, point 3.2.7), it is noted, for the sake of completeness, that this relates to the situation where the EPO has established an international preliminary examination report (IPER). An IPER has not been issued in the present case, since the applicant did not file a demand requesting examination of the international application by the international preliminary examining authority (Chapter II of the PCT). In addition, it is noted that point 7.11.4 must be read in the context of preceding point 7.11.3, which explicitly refers to the case where "the applicant successfully refutes the objection ... or the interpretation of the rules regarding unity of invention was erroneous".

3.2 Consequently, in order to establish whether Rule 164(2) EPC is applicable in the present case, it must be decided whether the examining division was correct in its assessment that the subject-matter now claimed in the main request ("invention 2") and the searched subject-matter ("invention 1") are non-unitary.

The objection of lack of unity of the ISA, on which the examination division relied, was raised a posteriori, based on document (1) (see above point III). In Step D of Example 14d (page 200), a process is disclosed for the synthesis of the present sodium salt, which is obtained as a "white solid". Thus, this material already forms part of the prior art, but its solid-state structure is not specified, that is, whether it is crystalline, non-crystalline or amorphous (cf. application in suit, originally filed claims 1 to 25; 26, 27; and 28, respectively). It must therefore be concluded, prima facie, that any one of these features, including "crystallinity", defines a contribution over the prior art, and therefore qualifies as a potential "special technical feature" in the sense of Rule 44(1) EPC.

The examining division argued in this context that, although the ISA had found "invention 1" to be novel with respect to document (1), it had not considered it to be inventive with regard to said document (cf. above point XI). However, it is noted that this opinion of the ISA on novelty and inventive step was not included as part of the analysis relating to unity, and for good reason. Indeed, in the present case, a definitive conclusion as to whether the common concept of "crystallinity" is novel and inventive cannot be reached without a full substantive examination procedure, with active participation of the appellant. This is clearly required in order to establish what solid-state form is actually obtained in Example 14d of document (1) (cf. also point 4 below), and whether any claimed subject-matter possesses surprising properties with respect to the prior art material, as contended by the appellant (see application in suit, page 9, lines 29 to 31 and statement of grounds of appeal, point 3.4).

Consequently, the board concludes that, prima facie, the feature of "crystallinity" can be regarded as constituting a "special technical feature" in the sense of Rule 44(1) EPC, establishing unity between present "invention 1" and "invention 2" in accordance with Article 82 EPC. Accordingly, as explained above under point 3.1, Rule 164(2) EPC cannot be seen as a bar to further prosecution based on the subject-matter now claimed in the main request.

4. Remittal to the first instance

It follows from the preceding considerations that the reasons for the refusal of the present application by the examining division were not justified. Under these circumstances, the board exercises its power under Article 111(1) EPC and remits the case to the examining division for further prosecution.

Examination can thus be resumed on the basis of the main request.

The examining division will have to consider whether an additional search is required in the present case (cf. above point 3.1).

With respect to the issue of clarity, it will in particular have to be examined whether the main request meets the requirements of Article 84 EPC, taken in combination with Rule 43(2) EPC, in respect of the number of independent claims in the same category.

In addressing the issue of novelty, the examining division should assess whether convincing evidence or arguments have been provided to establish that the claimed crystal form is in fact novel over the product produced by the process according to Example 14d of document (1).

5. Reimbursement of the appeal fee

According to Article 113(1) EPC, the decisions of the EPO may only be based on grounds on which the parties concerned have had an opportunity to present their comments. In this context, the word "grounds" should be interpreted as referring to the essential reasoning, both legal and factual, which leads to the refusal of the application (see T 951/92, OJ EPO 1996, 53, point 3(v)).

In the present case, the examining division referred in a first communication to the written opinion of the ISA stating that the claims as originally filed were non-unitary, and, with reference to Rule 164(2) EPC, requested that the applicant restrict the claims to the invention for which a search fee had been paid (see above point V). This is in accordance with standard procedure as outlined in the Guidelines for Examination, chapter III, point 7.10.

However, in response to the counter-arguments submitted by the applicant, the examining division merely referred once again to Rule 164(2) EPC (see above points VI and VII). This pattern was repeated in the subsequent reply of the applicant and summons to attend oral proceedings, despite the fact that the applicant had submitted additional arguments and requested a reasoned response from the examining division (see above points VIII and IX). Finally, in its letter of 4 February 2011, the applicant provided a yet more detailed analysis of the case and once again complained of the lack of reasoned response on the part of the examining division (see above point X). This letter remained unanswered prior to oral proceedings held before the examining division on 7 March 2011.

Thus, neither of the communications of the examining division referred to in the previous paragraph was in line with the requirements of Rule 71(2) EPC, since they contained no reasoned statement as to why the arguments of the applicant had not been accepted and the objection under Rule 164(2) EPC maintained. This conduct of the examining division thus deprived the applicant of the possibility of preparing meaningfully for the scheduled oral proceedings since it was not clearly informed of the essential reasons on which the findings of non-compliance were based.

Regarding the decisive question of whether "inventions 1 and 2" were to be considered unitary (cf. above point 3), the examining division submitted that, since it had invoked and applied Rule 164(2) EPC in its communications, it was implicit that it had reviewed the non-unity objection brought forward in the international phase and found this to be justified (see decision under appeal, point 3.2.5). However, in order to satisfy Article 113(1) EPC, the outcome of this review should have been communicated in such a way as to permit the applicant to understand and respond to the essential reasons for the conclusion reached.

Indeed, from the statement of grounds of appeal (see point 3.4; cf. decision under appeal, point 3.2.4.3), it is apparent that the reasoning of the examining division for rejecting the applicant's argument that "crystallinity" was to be seen as a "special technical feature" was only communicated to the applicant with the decision under appeal.

Moreover, it is apparent, from the communications of the examining division and from the minutes of the oral proceedings before the examining division, that the objection under Rule 137(5) EPC, on which the refusal was also based, was communicated to the applicant for the first time in the form of a statement at the conclusion of oral proceedings.

In view of the above, it must be concluded that the refusal of the application was based on legal and factual reasons which were presented for the first time in the decision under appeal and on which the appellant was therefore given no opportunity to present its comments. The board considers that this failure to comply with the requirements of Article 113(1) EPC constitutes a substantial procedural violation and that it is therefore equitable to order the appeal fee to be reimbursed in accordance with Rule 103(1)(a) EPC.

6. Oral proceedings

In view of the decision of the board, oral proceedings were not necessary in the present case, in accordance with the appellant's conditional request (see above point XIII).