Wednesday 16 February 2011

How to get the wrong invention searched

For one reason or another, a European patent application may turn out to contain more than one invention (known as a lack of unity: Article 82 EPC).  This might be evident from the outset by the way the claims are drafted (assuming this is not merely a Rule 43(2) issue), or might only be apparent once an examiner starts to carry out a search (a so-called a posteriori lack of unity: Guidelines C-III 7.6).  In the latter case, if a first claim is broad the various options in the claims may mean that a search would have to go down more than one path to ensure all possible options are searched.  An examiner will then issue only a partial search report (under Rule 64) and will invite the applicant to pay more search fees to have the other invention(s) searched.

Rule 64 is quite specific about what will and will not be searched.  It says that the EPO "shall draw up a partial search report on those parts of the application which relate to the invention, or the group of inventions within the meaning of Article 82, first mentioned in the claims" (emphasis added).

One might therefore think that, to be sure a preferred invention is searched, the thing to do would be to place it first in the claims, whether this is in the first independent claim or the first option in a first independent claim having multiple options.  This would, surely, ensure that the search report covers the invention "first mentioned in the claims".  Or would it?

I have heard of at least one instance where the EPO has decided to search an invention other than that "first mentioned in the claims". There seems to me to be no legal basis for doing this. However, there are some hints that, at least in one instance, this might have been done to avoid any possibility of double patenting (that is, to prevent repeating a search already conducted for another, related application).

If this is indeed the case, then I am surprised the EPO is ignoring an explicit legal provision to do something that Boards of Appeal of the EPO have repeatedly found to have no legal basis in the EPC (see, for example, T 587/98, G 1/05 and T 1423/07).

Even if double patenting has nothing to do with it, this type of approach would mean that simply presenting subject matter first in a claim may no longer be enough to ensure that the required subject matter is searched. This is bound to place an even bigger cost burden on applicants who have filed divisional applications to important subject matter simply because the EPO has not concluded prosecution of parent applications (or, sometimes, even issued a second office action) within 2 years.

Can this be right? Is there anything that can be done to rectify the situation (other than paying an additional search fee)? Your thoughts would be welcome.


  1. "I have heard of at least one instance ..."
    would Tufty mind sharing the application # of that instance? Thanks for raising this point anyway and
    all the best for your solo prawl Tufty.

  2. Thank you for your comment. Unfortunately I am not at liberty to divulge the application number.

  3. Just a precision
    When you say : "contain more than one invention (known as a lack of unity: Article 82 EPC)", it is not completely true. An application may contain several inventions (like for instance, a chemical product and an intermediate) but there can be unity of invention. So, it is not because there are several inventions that there is lack of unity.

  4. Is the first 'at least once instance' the same as the second "at least in one instance"?

    The first thing to do is call the examiner. If that doesn't work try amending the claims to the desired invention, then proceed to appeal on refusal. It may be cheaper for the applicant to pay the extra search fee.

  5. I would tell the examining division that the search division searched the wrong invention and ask for correction of the search report. The examining division will agree with the search division (since they are the same) and you will have to ask for an appealable (interlocutory) decision and win the case before the BoA.

  6. The letter to the examiner should read "I hereby restrict the claims to the invention first mentioned in the claims, which you will have searched as required by the law.

  7. I do not see how double patenting could possibly justify a decision of the Search Division not to search the invention first mentioned in the claims.

    In my view it is simple: the Search Division was obliged to search the first invention. The Examining Division cannot therefore refuse claims directed to the first invention on the basis that the first invention was not searched. The Examining Division is hence obliged to order an additional search (for free).

    There is no basis for requesting the Examining Division to correct the search report. However, one could always try to notify the EPO immediately after receiving the search report that something went wrong. Maybe it will trigger a correction by the Search Division. If not, that doesn't really matter (well... the applicant can of course make a less well-informed decision on how to proceed).

    Btw, G 1/05 clearly explains that double patenting is a ground for refusal: "Therefore, the Enlarged Board finds nothing objectionable in the established practice of the EPO that amendments to a divisional application are objected to and refused when the amended divisional application claims the same subject-matter as a pending parent application or a granted parent patent." (Interesting... I had not noticed the "the same ... as a pending parent application" alternative before.)