CASELAW-EPO - reviews of EPO Boards of Appeal decisions

The application relates to a solid-state image sensing apparatus and camera system.

Brief outline of the case

The application was refused as claim 1 of the MR and of AR1 and 2 lacked IS, and that claim 1 of AR 1 was lacking clarity.

In its decision, the ED also refused the request under R 64(2) for a refund of the further search fee paid during the search phase.

As the board raised in its communication under Art 15(1) RPBA an objection pursuant Art 76(1), the board admitted a new MR filed during OP. The new MR was still infringing Art 76(1).

The request for reimbursement was also rejected and the appeal dismissed.

We will concentrate on the non-reimbursement of the extra search fee.

The applicant’s point of view

At the OP before the board, the applicant stated that it did not contest that the two groups of claims identified by the SD did not relate to a group of inventions so linked as to form a single general inventive concept.

Nevertheless, the appellant argued that asking for a further search fee had not been justified in view of the Guidelines F-V, 4 (version of March 2024) and decisions T 129/14 and T 755/14.

In the applicant’s opinion, further search fees should not be asked for when dependent claims merely characterise features already specified in the independent claims.

Moreover, the search division would not have asked for a further search fee for claims 3 to 7 had it taken document D1 into account.

In any case, the effort required for searching the features of these claims did not justify the payment of a further search fee.

The boards decision

In its communication pursuant to Art 15(1) RPBA, the board provisionally confirmed the SD’s finding that claim 2 and claims 3 to 7 of the application as filed did not relate to a group of inventions so linked as to form a single general inventive concept.

The applicant did not contest this. Therefore, the case in hand must be distinguished from the case on which decision T 129/14 was based, in which the board found that all the claims of the application as filed related to a group of inventions so linked as to form a single general inventive concept.

In the case in hand, the SD found that the entirety of the subject-matter of the first invention was not new in view of document D1.   

The invitation to pay a further search fee issued by the EPO would have been in line with the guidelines cited by the applicant if they had been applicable at the time of the search.

The board disagreed with the appellant that further search fees should not be asked for when dependent claims further characterise features already specified in the independent claims.

If such a rule – which has no basis in the EPC – were nonetheless applied as a principle, the payment of further search fees could be easily circumvented by filing an independent claim specifying a combination of broadly formulated features and multiple groups of dependent claims each solving a different problem related to one of these broadly formulated features.

Comments

A lack of unity exists either:

• When a group of inventions is not so linked as to form a single general inventive concept (Art 82).
• In the absence of special technical features making a contribution over the prior art and linking the different inventions (R44).

The board proposes here a further definition:

• A lack of unity exists when an independent claim is not patentable for lack of N or IS, and this results in multiple groups of dependent claims each solving a different problem with respect to the available prior art.

https://www.epo.org/en/boards-of-appeal/decisions/t210344eu1