In exceptional cases an invitation to pay additional search fees under Rule 64(1), Rule 164(1) or Rule 164(2) may be combined with an invitation to restrict the scope of the search under Rule 62a(1) and/or Rule 63(1).
When the application enters the examination phase or, in the case of Rule 164(2), after the reply to the first communication, the examiner will check whether the claims on which substantive examination is based meet the requirement of unity of invention (Art. 82) and cover only subject-matter which has been searched. If the claims lack unity of invention, the applicant will be invited to limit the claims to one searched invention and to exclude all unsearched subject-matter from the scope of the claims. If in reply to the objection raised by the examiner the applicant fails to respond adequately (either by amending the claims or by submitting convincing arguments) and the non-unity objection can be maintained, the application may be refused under Art. 97(2) in conjunction with Art. 82 (see H‑II, 7.3 and 7.4), provided that the right to be heard – which includes the right to oral proceedings if so requested (Art. 116(1)) – has been respected.
If the original set of claims has been amended before entering the examination phase or, in the case of Rule 164(2), in reply to the first communication such as to meet the requirements of Art. 82, but includes subject-matter that was excluded from the search following an invitation under Rule 62a(1) and/or Rule 63(1), the examiner will either (i) invite the applicant to limit the set of claims to the searched subject-matter under Rule 62a(2) and/or Rule 63(3), or (ii) raise an objection under Rule 137(5) against the claim(s) concerned (see H‑II, 6.2). In Rule 164(2) cases, if the first communication already included the relevant objections/invitations and the right to be heard has been respected, the application may be refused.
Date retrieved: 17 May 2021