|How many branches does this tree have?|
Photo by Pablo D. Flores
While the substantive examination procedure deals with the question whether there is one invention or zero inventions (wherein the applicant tends to advocate in favour of the greater among these numbers) the situation is opposite in the search procedure. In this early stage of the procedure, the examiner may, under certain circumstances, limit his search to the invention first mentioned in the claims. A search for further inventions is carried out only upon payment of a further search fee (this option having been introduced for the case of EURO-PCT applications only as of November 1, 2014).
The case of so-called non-unitiy a posteriori can be understood by adopting the illustrative image of a "claim tree", the examiner should start searching with claim 1 as the stem of the tree. When having found a document destroying novelty up to a branching point where the claim tree splits into different branches, these branches should be identified by defining "special technical features" shared by the claims being a part of the branch under consideration (Rule 44 EPC) and the examiner should then follow the branch first mentioned in the claims for the further search and invite the applicant to pay additional search fees for the other inventions. Failure to do so leads to foreclosure of the unsearched subject-matter for the further prosecution (Rule 137(5) EPC).
In the case underlying the decision T129/14, the examiner had adopted a particularly captious approach to counting the number of inventions in the application. The examiner found prior art destroying the novelty of claims 1, 5, 14 and 15 as originally filed, which he considered to constitutethe unitary group of inventions first mentioned in the claims, and concluded that these claims cannot contain any special technical features in the sense of Rule 44 EPC which could potentially be shared with other claims. Amendments relating to subject-matter of claims other than those mentioned above were rejected as relating to unsearched subject-matter.
In the picture of the claim tree, the examiner reverses the tree and defines the stem as a further branch and magically increases the number of inventions by one.
Luckily, the board of appeal did not follow this approach. Claims which are anticipated by the prior art cannot include features which define a contribution the claimed invention makes over the prior art as stipulated in R 44 EPC. The application was remitted to the first instance and the appeal fee was refunded as a matter of equity in view of the fundamental procedural violations.
Thanks to Laurent Teyssèdre for having spotted this decision in his French blog here.