If not all of the claimed inventions have been searched, in accordance with G 2/92 the applicant must restrict the claims to one of the searched inventions. Thus, if in reply to the search opinion the applicant then restricts the claims to one of the originally claimed inventions which has not been searched, the examining division will write a first communication repeating the lack-of-unity objection raised in the search opinion. Any arguments of the applicant should be duly considered and dealt with in the communication.
If the application is restricted to an unsearched but originally claimed invention, it can be refused under Rule 64 in line with G 2/92 (subject to the applicant's rights under Art. 113(1) and Art. 116(1)).
Rule 137(5) cannot be invoked. It 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.
In both cases, if the applicant declines to limit the claims to a searched invention, the application is refused under Rule 164 in accordance with G 2/92 (subject to the applicant's rights under Art. 113(1) and Art. 116(1)).
Concerning the application of G 2/92, it should be kept in mind that the prohibition on pursuing an application for subject-matter for which no search fees have been paid applies to inventions; it does not apply to features which were originally claimed with a different invention and had not been searched, but which were originally disclosed in combination with the searched invention or group of inventions (see T 998/14).
Date retrieved: 30 December 2018
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EPC Implementing Rules
EPO Guidelines - B Search
EPO Guidelines - E General Procedural Matters
EPO Guidelines - F The European Patent Application
EPO Guidelines - H Amendments and Corrections
Offical Journal of the EPO
XOJ EPO 2014, A70 - Notice from the European Patent Office dated 10 June 2014 concerning amended Rules 164 and 135 EPC