The extent of the search for prior art to be conducted for the purposes of the European search report is defined in Art. 92 EPC, which states that the EPO shall be drawn "on the basis of the claims, with due regard to the description and any drawings". In principle, and in so far as possible and reasonable, the search should cover the entire subject-matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended (Guidelines B‑III, 3.5 – November 2015 version).
In T 708/00 (OJ 2004, 160) the application was refused by the examining division, principally on the grounds that the new claims were not allowable under R. 86(4) EPC 1973. The board stated that the provisions of Art. 92(1) EPC 1973 must not have the effect of limiting the search solely to the subject-matter of the claims, even if this would simplify matters for the search division. Nor does this imply that the sole purpose of the description and drawings is to help interpret the claims. It does, however, mean that the search division has to be discerning in the use of its discretionary power so as to ensure that the search is in complete accordance with the subject-matter of the patent application (see R. 44(1) EPC 1973), i.e. the invention, even if the essential features are not all defined in the claims at the time of search but are disclosed for example in the description or drawings. In the case at issue, the applicants were never informed of exactly what subject-matter is searched, which means that the examining division and board of appeal were also without any information in this regard. It was therefore impossible - since negative proof is out of the question - to establish what subject-matter went "unsearched" under R. 86(4) EPC 1973. This rule therefore had to be interpreted using alternative means such as the preparatory documents or the documents published regarding the adoption of the rule. The board came to the conclusion that amended claims may only be refused on the basis of R. 86(4) EPC 1973 if the subject-matter of the claims filed originally and that of the amended claims is such that, had all claims originally been filed together, a further search fee would have been payable - on top of the search fee payable in respect of the claims actually filed at the outset - in respect of the amended claims, relating to a different invention within the meaning of R. 46(1) EPC 1973.
The board noted that R. 86(4) EPC 1973 must be interpreted so as to fairly balance the objective of this rule, namely the EPO's interest in collecting, in return for services rendered, search and examination fees, and the fundamental right conferred by the EPC on the applicant to make amendments at least once to the description, claims and drawings that prove necessary during the grant procedure. The board pointed out that the intention and purpose of R. 86(4) EPC 1973 and the interference with the applicant's fundamental right to amend the application at least once called for a strict interpretation of R. 86(4) EPC 1973 (T 141/04). It held that R. 86(4) EPC 1973 did not apply when the applicant had not paid the search fee in respect of a non-unitary invention relating to the originally filed claims in spite of being invited to do so under R. 46(1) EPC 1973. In that case, the application could not be examined further, and a divisional application would have to be filed if protection were sought (see G 2/92, OJ 1993, 591). The boards in T 319/96 and T 631/97 (OJ 2001, 13) made a clear distinction between applying the provisions of R. 86(4) EPC 1973 and a situation where search fees were not paid in spite of an invitation to do so under R. 46(1) EPC 1973.
In T 789/07 the board held that in order to search a claimed feature completely – as required by Art. 92 EPC and in line with the Guidelines – the search division must as a rule ascertain how the feature is to be interpreted in the light of the description and drawings. Only then can it arrive at a reasoned assessment about the amendments likely to be made to the claims during examination proceedings and within the framework of the original disclosure. This interpretation also forms the basis for comparison, with a view to R. 86(4) EPC 1973, with the originally claimed invention or group of inventions. The board also took the view that a claimed feature falling within the scope of the search must be regarded for R. 86(4) EPC 1973 purposes as searched, even if it was not in fact searched in a specific case (see also T 2334/11).
In T 2334/11, the examining division had taken the view that the amendment to claim 1 did not meet the requirements of R. 137(5) EPC and so refused the amended set of claims according to the main request. The board observed that the first requirement for applicability of R. 137(5) EPC (formerly R. 137(4) EPC and, before that, R. 86(4) EPC 1973) was that the amended claims related to unsearched subject‑matter. It stressed that it did not necessarily follow from the mere fact that a feature was not included in the searched set of claims that it had not been searched (see T 708/00, OJ 2004, 160, T 377/01 and T 789/07). Thus, Art. 92(1) EPC, as worded in the EPC 1973 in force at the time of the search at issue, required that the search report be drawn up "on the basis of the claims, with due regard to the description", while the Guidelines stated that "in principle, the search should cover the entire subject-matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended". In the board's view, the subject‑matter of the amended claim had to be deemed searched for the purposes of R. 137(5) EPC, even if the search had not actually covered the added feature (see T 789/07) (see also T 345/13).
In T 345/13 the board noted that the search should be made on the basis of the claims, with due regard to the description and any drawings (Art. 92 EPC), and with particular emphasis on the inventive concept. In principle, the search should cover the entire subject-matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended (Guidelines, B‑III, 3.5). It followed from these principles that in the present case the subject-matter of the amended claims should have been covered by the search, and is thus deemed to be searched for the purpose of applying R. 137(4) EPC as in force before 1 April 2010. The board therefore did not follow the examining division's application of R. 137(5) EPC [R. 137(4) EPC as in force before 1 April 2010], since a prerequisite for applying this Rule, ie that the amended claims relate to unsearched subject-matter, was not fulfilled. For this reason alone the impugned decision had to be set aside.
In T 264/09 the board stated that if a feature which has not been searched and which further defines an element which was already part of a claim which had been searched, is taken from the description and added to this claim in order to overcome an objection under the EPC, e.g. lack of inventive step, this does not result in a claim which has been amended such that it relates to unsearched subject-matter which does not combine with the originally claimed invention to form a single general inventive concept. The board thereby followed the well-established case law on the interpretation of R. 86(4) EPC 1973 (see e.g. T 708/00 (OJ 2004, 160), T 274/03, and T 141/04), it being noted that R. 86(4) EPC 1973 has the same wording as R. 137(4) EPC (as in force at the date the examining division took its decision), which, as from 1 April 2010, is included in R. 137(5) EPC. The board noted that the Guidelines were drafted accordingly; these explicitly mention the possibility of carrying out an additional search in connection with the examination of amended claims (T 2334/11).
Date retrieved: 30 December 2018