Rule 137(5) EPC does not confer any discretionary power

The Examining Division (ED) had refused patent application 14151069.3 after they decided not to admit a set of amended claims into the procedure pursuant to Rule 137(5) EPC.  The amended claims were the sole request of the applicant, and, in the absence of any (admitted) claims in the proceedings, the ED therefore refused the application.

The applicant appealed the decision and requested a grant of the patent based on the claims that were not admitted. As an auxiliary request, the applicant requested that the claims would be admitted into the procedure and the case remitted to the ED. In addition, the applicant requested reimbursement of the appeal fee because it considered that the ED committed a substantial procedural violation by refusing to perform an additional search. 

History of the case

The Search Division (SD) had issued an invitation to the applicant to indicate the subject-matter to be searched, stating that “due to the excessive use of the word “may” in the description, no meaningful search of the whole claimed subject matter could be carried out. In response to this invitation, the applicant had replied that the search should be made on the basis of the claims, which did not include a single optional feature.

The SD had therefore drawn up a partial European search report wherein it indicated that the

“search division has restricted the search to the features explicitly described in the claims, excluding the optional features of the description that were not explicitly present in the searched claims." (emphasis added)

 During examination, the applicant attempted to make an amendment to claim 1. However, since the amended feature was not explicitly described in the claims as originally filed, the ED, endorsing the search division’s approach, deemed the matter to be “unsearched”. According to the ED, the skilled person would have understood ”every single feature of the invention to be “optional” because of an excessive use of the word “may” in the description.” They therefore did not admit the amended claims into the proceedings, invoking Rule 137(5) EPC. As the amended claims were the sole request, the ED refused the application.

 The Board discussed two aspects: a review of the non-admittance decision on the basis of Rule 137(5) EPC, and the compliance of claim 1 with Rule 137(5) EPC.
 

Review of the non-admittance decision on the basis of Rule 137(5) EPC

The ED provided themselves with the discretionary power to decide on the admittance of a claim request. The Board considered this to be an incorrect interpretation since Rule 137(5) EPC, as opposed to Rule 137(3) EPC, does not confer any discretionary power to the Examining Division. 

Rule 137(5) EPC states that (emphasis added by the Board):

“Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. Nor may they relate to subject-matter not searched in accordance with Rule 62a of Rule 63”.

The Board concluded from this that Rule 137(5) EPC does not refer to the act of making an amendment, but rather to the amended claims. Worded differently, Rule 137(5) EPC relates to a matter of substantive law, rather than to a matter of procedural law.

Rule 137(5) EPC alone does not provide a legal basis for taking a discretionary decision on the admittance of amended claims. A refusal of the application based on Rule 137(5) EPC would have required the ED to examine compliance with that provision in full, and not only in a prima facie way in the context of an admittance decision.

Although not applicable to the present case, the Board noted that in the context of exercising discretionary power under Rule 137(3) EPC, an ED may deny their consent to an amendment because of prima facie deficiencies that may concern requirements of substantive law. This may include the substantive requirements according to Rule 137(5) EPC, but then the ED should have relied on Rule 137(3) EPC as legal basis for exercising discretion in the context of the admittance decision. This is not what they did in the present case and therefore the ED exceeded the limits of their discretionary power.

The Board considered that the incorrect interpretation and application of Rule 137(5) EPC by the ED constitutes a substantial procedural violation. The case was therefore remitted to the ED for further prosecution.

Compliance of claim 1 with Rule 137(5) EPC

In view of the need for procedural economy, the Board considered it expedient to also provide guidance on the compliance of claim 1 with Rule 137(5), second sentence, EPC.

According to the Board, it was not justified to invoke Rule 63(1) EPC to restrict the search based on the alleged deficiencies under Art. 83 and 84 EPC. The SD and ED took the view that the skilled person would have considered every single feature of the invention to be “optional” because of the excessive use of the word “may” in the description. According to the Board, this reasoning was incorrect, because the ED seemed to have attributed only linguistic skills to the skilled person, rather than technical skills.

 In their view,
    “the person skilled in the field of the present application would have analysed the seemingly optional features of the description from a technical perspective and would have filtered out those features that necessarily make up the invention or that are likely to be used to amend the claims.”

Since such an analysis had not been brought forward, neither in the partial European search report, nor in the European search opinion, nor in the decision under appeal, it was not justified to invoke Rule 63(1) EPC and to restrict the search.

However, acts of the SD are not subject to appeal and thus cannot be overturned (cf. T 1895/13). The relevant question therefore is whether the ED should have carried out (or carry out after remittal) an additional search.

According the Board, the ED was not impeded by this restricted search. The Board analyzed the case and the amendment and arrived at the conclusion that the search results of original claim 1 inevitably were also relevant for amended claim 1. Hence no additional search would have been required by the ED to examine the amended claims.

Moreover, for the compliance of claim 1 with the requirements of Rule 137(5) EPC, the Board points out that Rule 63 EPC relates to claimed subject matter. Therefore, while present claim 1 may somehow relate to unsearched subject-matter per se, such unsearched subject matter was not part of the claimed subject-matter as the amendment came from the specification. Hence present claim 1 cannot relate to the subject-matter not searched within the meaning of Rule 137(5) EPC, second sentence. 

The appellant had requested that the appeal fee be reimbursed on the grounds that the ED committed a substantial procedural violation by refusing to perform an additional search. Although this turned out not to be the case, the Board considered it “equitable” to reimburse the appeal fee based on the substantial procedural violation due to the incorrect application of Rule 137(5) EPC.