T 0129/14 17-09-2014

1. The appeal is admissible.

2. As far as relevant for the present appeal, Rule 164(2) EPC stipulates that "[w]here the examining division finds that [...] protection is sought for an invention not covered by the [...] supplementary European search report, it shall invite the applicant to limit the application to one invention covered by the [...] supplementary European search report."

This rule does not explicitly refer to any assessment of unity of invention subsequent to that made by the European Patent Office at the time of drafting the supplementary European search report.

However, in the European grant procedure the Examining Division becomes responsible for examining unity of invention of the entire application, which includes a duty to review the unity assessment that led to the drafting of the supplementary European search report.

This conclusion is in line with the findings of opinion G 2/92 and decision T 631/97 (especially points 3.6 and 3.9.2 of the Reasons) concerned with corresponding legal provisions in force at that time.

3. Hence, in the present case, a precondition for holding claims inadmissible with reference to Rule 164(2) EPC and for basing a refusal of the application on this rule, is that the assessment of unity of invention made by the European Patent Office at the time of drafting the supplementary European search report was correct, at least as far as the identification of the unitary group of inventions first mentioned in the claims is concerned.

It follows that it was the duty of the Examining Division, in its decision to refuse the application, to provide reasons why such a lack of unity was present.

The Examining Division reviewed the Search Division's assessment of lack of unity of the claims as originally filed under point 1 of the Reasons of the impugned decision.

4. The application as originally filed included 20 claims.

Claim 1 is an independent claim directed to a magnetic resonance imaging method with a specific interpolation algorithm to obtain an image from discrete measurements in a region of interest. In particular, in the image formation process some of the discrete measurements are selectively skipped and the data associated with them are ignored in order to obtain an image more rapidly. According to the specific application of the method, the resulting loss of accuracy would still be acceptable. Claims 2 to 16 are dependent on claim 1.

Claim 17 is an independent apparatus claim for carrying out the method according to claim 1 and corresponds to claim 4 in terms of apparatus features. Claims 18 to 20 are dependent on claim 17.

5. Unity of invention with regard to the originally filed claims

5.1 Article 82 EPC states: "The European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept."

It is therefore to be deduced that unity of invention is lacking only if the application relates to a group of inventions forming more than one general inventive concept.

5.2 Rule 44(1) EPC specifies that a group of claimed inventions fulfils the requirements of Article 82 EPC "only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features", i.e. the features defining a contribution over the prior art.

5.3 According to the established case law of the boards of appeal, and as also explained in the Guidelines for Examination in the EPO, F-V, 7, a lack of unity may be evident "a priori", i.e. before considering the state of the art revealed by the search, or "a posteriori", i.e. after taking that state of the art into consideration. In both cases an analysis of the technical problem underlying each invention is required.

5.4 In the impugned decision, the Examining Division held that claims 1, 5, 14 and 15 as originally filed defined a first group of inventions and claims 2 to 4, 6 to 13 and 16 to 20 as originally filed defined a second group of inventions, non-unitary with the first one.

In its assessment the Examining Division adopted an "a posteriori" approach, since it took into consideration document US-A-5,243,284 (D1), revealed by the supplementary European search.

It went on to affirm that the subject-matter of claims 1, 5, 14 and 15, i.e. the first group of claimed inventions, lacked novelty over document D1. As a consequence, the problem to be solved "was the same as the one already known from D1".

However, for each group of claimed inventions, the Examining Division should have identified special technical features and established a respective technical problem solved over document D1, i.e. the prior art considered in its assessment. This is not only clear from the established case law of the boards of appeal, but also directly derivable from the wording of Rule 44(1) EPC, which explicitly mentions, for each claimed invention, "a contribution [...] over the prior art".

Since the technical problem solved by the first group of claimed inventions was not established over document D1 - and could not have been in view of the fact that document D1 was considered to be novelty-destroying for the claims of this group - the assessment of unity of invention presented in the impugned decision is, for this reason alone, not correct.

5.4.1 Claim 1 and its dependent claims 2 to 16

The Board cannot agree with the reasoning of the impugned decision that independent claim 1 may lack unity with its dependent claims 2 to 4, 6 to 13 and 16.

Normally, a dependent claim has all the features of its independent claim. If the independent claim comprised one or more special technical features defining a contribution over the prior art under consideration, the dependent claim would also comprise those same special technical features. Hence they would form a single general inventive concept within the meaning of Article 82 EPC. If the independent claim did not comprise any special technical features defining a contribution over that prior art, e.g. because its subject-matter was not novel, then it would not form any inventive concept. Hence, again no more than one general inventive concept within the meaning of Article 82 EPC - possibly defined by the additional features of the dependent claim - would result.

As also argued by the appellant, this is in line with what is explained in the Guidelines for Examination in the EPO, F-V, 9, explicitly for the "a priori" approach, and implicitly - the question of the presence of an inventive link is only mentioned between different dependent claims - for the "a posteriori" approach.

It is therefore concluded, contrary to the impugned decision, that dependent claims 2 to 16, in particular claims 2 to 4, 6 to 13 and 16, are unitary with claim 1.

5.4.2 Independent claims 1 and 17

Article 82 and Rule 44 EPC do not rule out that different independent claims of different categories will be unitary when so linked as to form a single general inventive concept.

As also recognised by the Examining Division in the impugned decision, original claim 17 corresponds to original claim 4 in terms of apparatus features and is unitary with the latter (points 1.4 and 1.5.2 of the Reasons).

Since, as explained above, claim 4 is linked to claim 1 so as to form a single general inventive concept, the same applies between claim 17 and claim 1.

It follows that claim 17 and also its dependent claims 18 to 20 are unitary with claims 1 to 16.

5.5 Hence, claims 1 to 20 relate to a group of inventions so linked as to form a single general inventive concept within the meaning of Article 82 EPC. As a consequence, the requirements of this article are met by the originally filed claims.

5.6 Therefore, the supplementary European search report should have been established on the basis of all the originally filed claims and the appellant has the right to obtain such a report.

5.7 For these reasons, the decision under appeal is to be set aside.

6. Admissibility of the appellant's request in particular with regard to Rule 164(2) EPC

Since the claims to be searched at the time of drafting of the supplementary European search report related to a group of inventions so linked as to form a single general inventive concept and should all have been searched, the claims according to the appellant's request filed with letter dated 27 July 2011, which are based on a combination of originally filed claims, should not have been held inadmissible with reference to Rule 164(2) EPC.

Moreover, these claims were filed an an early stage of the examination proceedings and other reasons not to admit them were neither given in the impugned decision nor are otherwise apparent.

Hence, the appellant's request filed with letter dated 27 July 2011 is to be admitted.

7. Remittal to the department of first instance

Since no search has been carried out for the subject-matter of the claims of the appellant's request filed with letter dated 27 July 2011, the Board is not in a position to conduct any meaningful assessment of patentability.

Furthermore, in point 5. of the statement setting out the grounds of appeal, the appellant itself requested remittal to the department of first instance for such a search to be carried out.

For these reasons the Board makes use of the discretion conferred to it by Article 111(1) EPC and decides to remit the case to the department of first instance for further prosecution.

8. Reimbursement of the appeal fee

According to Rule 103(1)(a) EPC, "The appeal fee shall be reimbursed [...] where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation".

Based on the reasons given in points 5. to 6. above, the impugned decision is to be set aside. It follows that the appeal is allowable within the meaning of Rule 103(1)(a) EPC.

In its assessment of unity of invention, not only did the Examining Division deviate from the established case law of the boards of appeal and the practice explained in the Guidelines for Examination in the EPO, F-V, 7 and 9, but it also failed to provide substantial reasons for this deviation, especially as far as dependent claims 2 to 4, 6 to 13 and 16 as originally filed were concerned.

Moreover, it also completely ignored the appellant's arguments repeatedly presented on the basis of decisions of the boards of appeal and the Guidelines for Examination in the EPO. The only comment concerning these arguments is an unreasoned criticism of the headnote of decision W 8/91, which "did not appear to be supported by any of the actual content of said decision".

In the Board's view this goes against the appellant's fundamental right to be heard, as enshrined in Article 113(1) EPC. This provision not only gives the appellant an opportunity to present submissions and comments, but also requires that these are duly considered and that a reasonable attempt is made to understand them before a decision is taken. Therefore, it was the Examining Division's duty to show that it had considered the appellant's opinion, at least by commenting its main aspects in the final decision.

Hence, in line with the findings of decision T 747/06 (point 2.3.4 of the Reasons), the Board concludes that the Examining Division committed a substantial procedural violation.

This substantial procedural violation gave rise to the appellant's need to file an appeal in order to preserve its rights. Hence, the reimbursement of the appeal fee is equitable within the meaning of Rule 103(1)(a) EPC.

Accordingly, the appellant's request that the appeal fee be reimbursed is allowed.

9. Since the appellant's requests that the decision under appeal be set aside and that the appeal fee be reimbursed are allowable, there is no need for the Board to consider the subsidiary requests for oral proceedings and for a communication prior to oral proceedings.