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Needle-prick like objections? |
Claims 2-37 of this application were not searched during the PCT phase, under Art. 17(2)(a) PCT. The reason for not searching these claims is that the first embodiment of the application does not fall under the scope of Claim 1, yet the application cites documents that are prejudicial to the novelty of claim 1. In this situation it was unclear for the Examiner what the intention is of the applicant.
At first however, after entry into the regional phase, Examination seems to proceed normally, patentability objections are raised and the claims are amended. But when the claims are amended for a second time, the Examiner objects that unsearched subject matter is introduced in the claims, and rejects the claim amendments under Rule 137(3) EPC. During Oral proceedings, at which the applicant did not appear, the application is refused.
The board does not agree with examination in this manner. They provide the following catch phrase (my translation).
1. Refusing to admit claim amendments into the proceedings, because of a mixture of a missing (but justified) supplementary research and vague indications of the patentability of the amendments, exceeds the margin of discretion of the Examining Division under Rule 137 (3) EPC and constitutes a substantial procedural violation (see Reasons 2.8 ).
2. The approach of a search and examination division to initially produce an incomplete search with a non-substantiated reasoning, and on top of that, despite objections and amendments of the applicant, not to carry out an additional search for the new claims, but to present needle prick-like (nadelstichartig) vague objections to patentability is a substantial procedural error on its own (see Reasons Section 2.7).