An Application may only relate to one invention. This is a regulatory provision that serves only organizational, documentary, procedural and budgetary purposes. It has no effect on the protection that can be obtained. According to the established jurisprudence of the European Patent Office, the examination of unity should therefore not be carried out too narrowly. But what does this look like in practice?

The invention applied for concerned a so-called slot wall gripper for producing a slot in the floor. Claim 1 contained as features a linear drive and a mechanism which converted the linear movement into a rotary movement. The dependent claims specified the elements of the identifier in various ways.

The search division initially prepared only a partial search report in which it cited two citations. One of these was novelty-destroying for claim 1. As a result, the searcher requested four additional search fees because the dependent claims would contain four different groups of different detailed improvements (a posteriori lack of unity).

The Application paid the four additional fees under opposition. The subsequent full search report then contained three further citations, two of which had already been mentioned in the Patent Application and the remaining citation was only mentioned to illustrate the technological background, i.e. was not relevant to patentability.

The justification for the additional search fees was at issue in the Examination Proceedings. The Examining Division decided that the a posteriori lack of unity was justified, but that two of the four additional search fees had to be refunded due to the low search effort. The Application filed an appeal against this decision. At the same time, he demanded reimbursement of the appeal fee as there was a procedural defect.

The Board of Appeal upholds the Application on the merits. The search division proceeded incorrectly when examining the a posteriori lack of unity.

If the search leads to the result that claim 1 is not patentable, then the searcher must check whether the dependent claims contain special technical features which could be patentable over the prior art already identified. Only if this is the case can the searcher demand additional search fees due to a posteriori lack of unity.

In the present case, the searcher had proceeded incorrectly, contrary to the specific instructions in the Guidelines for Examination. The decision of the Examining Division must therefore be set aside. However, according to the Board of Appeal, there is no substantial procedural violation within the meaning of Rule 103 EPC, since the Guidelines for Examination are not binding. Therefore, the appeal fee will not be refunded.

Note: In practice, it is often the case that the broad main claim is met by a citation and that the Applicant then has various options for delimiting the subject-matter of the claim. It is, of course, important that he has as complete an overview as possible of the prior art so that he can take the right path. Carelessly conducted searches and partial searches are a nuisance and the applicant should defend himself against them.

Left: https://www.epo.org/law-practice/case-law-appeals/recent/t140755du1.html