Tuesday, February 28, 2017 T 145/13 - Non-enabled document in a non-unity objection

Can a non-enabled document be used in a non-unity objection? In 2004 the applicant filed an international application with 73 claims. The written opinion of the US ISA searched all claims and does not raise a lack of unity objection. The european phase is entered with a reduced number of 55 claims, but the supplementary European search report is less positive than its US counterpart. It finds a-posteriori non-unity and identifies 7 groups of inventions. The Examining division does not admit a first auxiliary request, filed during oral proceedings, because it relates to unsearched subject matter, Rule 137(5).

The appeal board disagrees. It finds that R.137(5) does not apply since the request corresponds to a combination of the original claims. R.164(2) does not apply since the cited document is not enabled, and is thus unsuited to support a lack of unity objection. 

Tuesday, October 18, 2016 T 1679/10 - Anticipation of amendments to claims

The leading principles for what subject matter must be searched "on the basis of the claims, with due regard to the description and any drawings" in accordance with Art. 92 EPC (here Art. 92(1) EPC 1973) is summarized as follows in the B-III 3.5 of the Guidelines:

"In principle, and insofar 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 [...]."

This decision clarifies that in the case of a very broad independent claim, the search division cannot be expected to have searched all possible amendments of this claim, unless the dependent claims or the description provides a direction of expected amendments. This decision will be incorporated in B-III 3.5 of the Guidelines as of November 2016.