CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2703/18 – Restraint to be adopted by the SD and/or the ED when raising an objection of lack of unity – No SPV committed by the ED

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Application EP 2 921 989 relates to a method for object recognition and/or verification on portable devices.

Brief outline of the case

The ED refused the application on the basis that the MR and AR 1 and 2 lacked IS, and AR 3 was not admitted under R 137(3).

The ED rejected the request to refund a further search fee because it confirmed the SD’s non-unity objection against the original set of claims.

The board set aside the decision of the ED, order the grant of a patent according to a new MR received during OP.

It also ordered the reimbursement of one search fee.

The board further considered that the ED had not committed a SPV, but merely wrongly assessed the lack of IS. The request for reimbursement of the appeal fee was rejected.

The decision is interesting as far as the reimbursement of the extra search fee and the appeal fee are concerned.

The board’s decision on the lack of unity

In the board’s view, SDs should exercise some restraint when issuing a communication under R 64(1). The same applies to EDs when applying R 64(2) EPC.

Findings of lack of unity a posteriori must be raised with caution especially when they rest on an objection of IS, as questions of IS often constitute the major issue in substantive examination and may be controversial until the end of the examination and/or appeal proceedings.

The SD should refrain from raising formalistic objections based on a literal interpretation of the claims, because the assessment of unity of invention by the SD in the context of R 64 only serves the purpose of determining whether a partial search report is to be issued, see also T 631/97, Reasons 3.6.

The search according to Art 92 is to be based on the basis of the claims “with due regard to the description and any drawings”. Findings on N or IS of the SD in a communication under R 64(1) should thus be robust, especially against foresee­able amendments and against clarity issues that the claims may have.

Case law in matters of lack of unity

In order to arrive at the above conclusion, the board referred to a series of decisions.

It referred in particular to T 188/00, Reasons 4.5, in which it has been considered that the scope of the review under R 64(2), previously R 46(1) EPC73, has to be carried out having regard only to the facts presented by the search division in its communication under R 46(1) EPC73″ and that “the ED has to base its review solely on the documents cited in the partial search report and on the specification of the different inventions drawn up by the SD, while taking into account arguments which the applicant may have submitted in support of his request for a refund”.  

The limitation to the facts presented by the SD, in particular the cited documents, postulated in T 188/00, has been followed, for instance, in T 1476/09, Reasons 3, T 2285/17, Reasons 4.2, and T 2873/19, Reasons 9.1. In T 188/00 and in T 1476/09, the board found that the examining division’s reasoning why the communication under R 64(1) had been justified was incorrect because it relied on prior art that had not been cited in the partial search report.

Other decisions have gone beyond T 188/00 by stating that the review under R 64(2) is to be based on the facts and arguments presented in the communication under R 64(1): see T 2526/17, Reasons 4.7, and T 1414/18, Reasons 4.3.

The present board agreed with T 188/00 to the extent that the ED may only find that the communication pursuant to R 64(1) was justified within the meaning of R 64(2) on the basis of the facts regarding the prior art presented by the SD with that communication, in particular the documents cited in the partial search report including sheet B.

Application to the present case

For the board, the invitation to pay a further search fee for original claims 10 and 11, i.e. the second “search subject”, may only have been justified if these claims were non-unitary with original claims 2-9, 12-13 and 15-17, the first “search subject”.

In the present case, the board noted that the reasoning of the ED, like that of the SD, ignored the depen­den­cies of these claims, apart from their dependency on claim 1, and appears to have only considered the additional features defined in each of the claims.

At least the subject-matter of original claim 3, itself being dependent on original claim 1, was common to the first and the second “search subjects”.

Furthermore, the ED did not clearly specify the special technical features (STF) within the meaning of R 44(1) that characterised the first “search subject”.

Original claims 2-5 were said to involve “potential special features” but these were identified as “commonly known features of object recognition/authentication using a dictionary of features (BoF)”, which rather suggests that these features were considered to be also not inventive over the prior art.

Original claim 6 is the first claim in the first “search subject” for which more concretepotential special features” were identified.

To be consistent with this finding, the ED should have concluded that at least the alternatives of original claims 10 and 11 that are dependent on original claim 6 – which have been included in the second search subject – comprise the same STF as the first search subject, so that there is no lack of unity between the first and the second search subjects.

It followed that the board was not convinced by the ED’s reasoning as to why the communication pursuant to R 64(1) EPC was justified.

The board also noted that the objection of lack of IS outlined by the SD in the communication and its further development by the ED in the decision were arguably already too complex and controversial to be suitable to support an objection of lack of unity of invention a posteriori in the context of R 64.

The board’s decision on the SPV

The applicant’s allegation that the ED did not apply “the objective methodology of evaluation typically used by the EPO” merely criticises a wrong assessment of prior art or technical content and therefore boils down to an error of judgment. This does not, however, constitute a procedural violation justifying the reimbursement of the appeal fee.

The board further considered that the objections raised by the ED in its communication, albeit possibly flawed, were sufficiently detailed for them to be addressed by the appellant. Also the applicant did not argue that it had not been given an opportunity to comment on the reasons relied upon in the contested decision.

Summons to OP had been issued and the OP took place in the absence of the applicant. This could not be taken against the ED.

The applicant alleged that the chair­man of the ED, during a conversation with the applicant, said that he “blindly trust[ed]” his first examiner and that he did not even know who the applicant was in this file. The applicant considered that in view of the volume and complexity of the file, it had been simply impossible for the chairman and any other member of the ED to get sufficiently acquainted with the matter within 1.5 working days before the OP and to build an independent opinion. Against this background, it was unclear how the ED had assured “an objective decision making during the oral proceedings”.

The board noted that those statements were not included in the minutes of the telephone conversation and the applicant did not request a correction of the minutes. Hence, the board could not take this alleged fact into account. But even assuming, for the sake of argument, that statements to that effect were made by the chairman, the board fails to see any robust evidence for the circumstance insinuated by the applicant that the members of the ED were indeed ill-prepared.


The present decision actually reminds that an objection of lack of unity is only justified when the case is clear cut. Determining a lack of N and/or IS is a matter for examination, and should not be pre-empted by the SD. The SD does not issue appealable decisions, but the ED does.

Refusing the reimbursement of extra search fees can only take place when assessing the submissions of the applicant with respect to the objections actually raised by the SD. It is however tempting for the ED to follow the objection raised by the SD.

Not clearly specifying the STF within the meaning of R 44(1) and speaking about “potential special features” shows that, in the present case, neither the SD nor the ED were really sure about the lack of unity.

From the board’s decision appears that the SD only considered the additional features defined in each of the dependent claims. This happens quite regularly and leads to unjustified objections of lack of unity.  

The other members of the ED and especially its chairman, merely followed the suggestion of lack of unity a posteriori raised by he SD. In view of the fact that EDs barely sit together, this is not a surprise.

 It is possible to imagine a chairman “blindly trusting” his first examiner=the SD in matters of unity, but the chairman of an ED should refrain from such statements.

The present decision also reminds us that claiming a SPV without at least a request for correction of the minutes, here of a telephone conversation, is rarely successful, as it is then difficult to establish that a SPV has actually occurred.  

It is also quite unusual that a representative directly calls the chairman of an ED. This should also be avoided, as it can be perceived as an attempt to circumvent the examiner in charge.

OP are the only way to address the whole division, but in the present case, the representative did not call in and the OP took place without the applicant.

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