EP 3 934 060 A1 relates to a concentrated winding electric machine, or a slotless electric machine.
Brief outline of the case
The present application is a divisional application of EP14790232.4 / EP3 055 920.
The application was refused on three grounds.
Firstly, the ED considered that the claims lacked clarity within the meaning of Article 84 EPC, as the term “slotless electric machine” was, in its view, inconsistent with certain passages in the description.
Secondly, it considered that this feature went beyond the content of the earlier application as filed, contrary to Art 76(1).
Thirdly, it concluded that it was impossible to carry out a meaningful search and that, without a search report, examination of the application was not possible.
In this context, the ED referred to R 63(2), Guidelines B-VIII, 3.2.2, and R 63(3).
The applicant’s point of view
The applicant argued that the ED had wrongly refused to carry out a search on “slotless electric machines”. The term “slotless electric machine” was technically clear and well-defined, that Art 76 (1) had not been infringed, and that the refusal to continue the examination on the ground that no search report had been drawn up was based on an erroneous application of R 63(1).
The applicant argued, in particular, that “slotless electric machines” were easily searchable using the keyword “slotless” and could be linked to relevant technical classifications, such as H02K 3/00, H02K 3/46 and H02K 3/47.
It also emphasised that the parent application had been the subject of a search, which, in its view, constituted strong evidence that a search was possible.
The applicant alleged a SPV, in particular on the grounds that the contested decision disregarded its unequivocal statement that it wished to carry out a search in the field of “slotless electric machines”,
The board’s decision
R 63 provides for a specific procedure where the EPO considers that a meaningful search cannot be carried out in respect of all or part of the subject-matter claimed. It allows the EPO to invite the applicant to specify the elements to be covered by the search. However, it does not, in itself, constitute a legal basis for refusing to examine the application on the sole ground that no search report has been drawn up.
In particular, R 63(3) deals with the procedural consequences of the applicant’s failure to file a statement in response to the invitation, or of such a statement being insufficient.
It does not allow the absence of a search report to be treated as an independent ground for refusing the application. Where, at the examination stage, it appears that the subject-matter claimed, or part thereof, may be the subject of a useful search, it is normally for the ED to arrange for a supplementary search to be carried out, unless the relevant features are well known.
This conclusion is consistent with the approach set out in established case law relating to cases in which no search report has been drawn up for certain claimed features.
In such a situation, the examination procedure cannot be closed on the sole ground that a prior search is lacking. Instead, it is necessary to assess whether a supplementary search is necessary and possible, taking into account the subject-matter actually claimed and the technical understanding that a skilled person would have of it; see CLBA, 11th edition, 2025, IV.B.4.1.2.
The contested decision does not contain such an assessment. It is essentially limited to finding that the objections relating to clarity and added matter would prevent any meaningful search and that, consequently, examination would not be possible.
This conclusion confuses two distinct issues:
- on the one hand, whether the claims satisfy the substantive requirements of the EPC and,
- on the other hand, whether the subject-matter claimed can be the subject of a search enabling the assessment of N and IS.
In this regard, the board expressly emphasised that the search forms the basis of the examination, and not the other way round. Even if an objection under Art 84 or Art 76(1) were likely to be raised, this would not necessarily justify the complete absence of a search, provided that the main technical subject-matter can be sufficiently identified.
In the present case, the applicant has, on several occasions, identified the subject-matter to be searched for as being a slotless motor.
The board found that the term “slotless electric machine” has a precise technical meaning as explained in various replies of the applicant to the communication raising an objection under R 63.
The fact that certain passages of the description were considered difficult to reconcile with the interpretation given by the applicant does not, in this case, allow the conclusion to be drawn that the claimed term would, in itself, lack a clear technical meaning for a skilled person.
The ED, in fact, contrasted this customary technical meaning with a literal and isolated reading of the word ‘slot’ in certain passages of the description. However, the relevant question is not whether the word ‘slot’ may appear elsewhere in the description in a specific mechanical context, but rather to determine the meaning of the expression ‘slotless electric machine’ in the technical field of electric machines.
The restrictive definition adopted by the ED does not necessarily lead to the advantages of a slotless machine, as it does not guarantee the required homogeneity of the magnetic field. In this respect, the definition adopted by the ED is inappropriate and should not be taken into account.
The board therefore concluded that the feature ‘slotless electric machine’ cannot be regarded as lacking clarity solely on the grounds that a literal and isolated interpretation of the word ‘slot’ might conflict with certain passages in the description.
Interpreted in its technical context, it refers to a ‘slotless’ machine, that is to say, a machine in which the stator side facing the rotor does not exhibit the alternation of teeth and slots characteristic of slotted structures.
The board dismissed the ED’s objections under Art 84 and Art 76(1).
The board concluded that a further search must be carried out, unless it is established, in the course of that search, that the relevant features are CGK or that specific and duly substantiated reasons effectively preclude a useful search. Such an assessment was not properly carried out in the contested decision.
The board agreed that the ED committed a series of SPVs.
The contested decision contains no substantive argument explaining why a search in the field of “slotless electric machines” would not be possible. Instead, the contested decision merely repeats, ad nauseam, that the claims lack clarity and infringe Art 76(1).
However, given the applicant’s clear statement as to the technical field in which the search is to be carried out, this argument is irrelevant and does not constitute grounds justifying the impossibility of carrying out a search relating to the subject-matter clearly specified by the applicant. Consequently, the contested decision is unfounded, in breach of R 111(2).
Furthermore, the applicant had deleted § [047], deletion which was not taken into account by the ED. Contrary to Art 113(2), the decision is also not based on the text proposed or accepted by the applicant.
Comments
The present decision makes clear that the examination procedure cannot be closed on the sole ground that a prior art search is lacking.
There are two distinct issues: whether the claims satisfy the substantive requirements of the EPC and, whether the subject-matter claimed can be the subject of a search enabling the assessment of N and IS.
I do not like to criticise former or new colleagues. However, in the present case, one wonder whether the ED was at all technically competent.
In any case, such a decision should never have left the premises of the EPO.
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