T 294/24: Should a search be carried out if the invention is not sufficiently disclosed or industrially applicable?

The application related to a method for converting nuclear energy through cold fusion – a phenomenon generally considered as not achievable at industrially applicable scale. Despite Applicant’s explanation and clarification of the subject to be searched in response to the invitation under Rule 63(1) EPC, the EPO found that a patentability search would not be meaningful and therefore issued a declaration of no search under Rule 63(2) EPC. After substantial examination, the application was refused due to insufficiency of disclosure, Art. 83 EPC and Rule 42(1)(e) EPC. This decision was appealed by the Applicant, who argued that a search could and should have been carried out.

Background

The Search Division (SD) found that the invention defined by the claims was not disclosed in sufficient detail for it to be carried out by a person skilled in the art, Art. 83 EPC and Rule 42(1)(e) EPC. Also, the invention was not industrially applicable, as required by Art. 52(1) EPC and Art. 57 EPC. The SD therefore issued an invitation under Rule 63(1) EPC, inviting the Applicant to file their comments. In response, the Applicant filed an explanation of the invention to be searched. This however did not change the opinion of the SD, which issued a declaration under Rule 63(2) EPC, explaining that no meaningful search could be done.

During substantial examination, the Applicant filed amended claims and requested a search be carried out. The Examining Division (ED) was not convinced and refused the application due to insufficiency of disclosure, Art. 83 EPC and Rule 42(1)(e) EPC. The ED confirmed SD’s finding that a search would not be meaningful.

The Appeal

The Applicant-Appellant (A) requested that the decision to refuse be set aside, a search be carried out and that the application be examined. As a main request, A requested that the claims as originally filed be searched. With a first auxiliary request, A requested that part of the claims as originally filed be searched. As second and third auxiliary requests, A requested that the search be carried out based on sets of amended claims filed with the grounds of appeal. With all requests, A also requested that the application be examined.

According to the preliminary opinion of the Board of Appeal (the Board), none of the requests met the requirements of sufficiency of disclosure, Art. 83 EPC, and the description did not explain how to carry out the invention, contrary to Rule 42(1)(e) EPC. Further, the invention was not industrially applicable, Art. 57 EPC. The Board therefore agreed with the SD’s decision not to carry out a search.

During the appeal, A presented detailed arguments, explaining the invention and underlying experiments. A discussed scientific prior art, including scientific theories and experimental results. A argued that the invention was not in conflict with any of the generally accepted scientific theories, and that their measurement results showed, unambiguously, that cold fusion reactions took place. The invention would therefore deserve the grant of a patent.

A argued that the application provided a theoretical explanation for cold fusion, as well as a number of ways for carrying out the invention. A considered that a search should have been carried out, since the exception under Rule 63(1) EPC should be interpreted narrowly, and Rule 63(2) EPC would only apply when it was not possible to carry out a search. According to A, the claimed features could easily have been searched. A further argued that any doubts regarding the technical effect of the claimed features would be related to clarity, Art. 84 EPC, or inventive step, Art. 56 EPC, but would not influence the possibility of carrying out a search.

The Board was not convinced by A’s arguments. The Board summarized that the generally accepted opinion of the scientific community is that cold fusion is difficult to achieve on earth with significant probability. According to the Board, the explanations in the application on how to achieve fusion at low temperatures would not be supported by established scientific theories. The Board concluded that this does not necessarily mean that the speculations are wrong, but that for A’s explanation to be plausible, there should be sufficient experimental evidence for it. The application lacked sufficient experimental evidence to convince the Board that the invention worked.

The Board denied A’s request to submit additional experimental results, since the statement of grounds of appeal shall contain the party’s complete appeal case, Art. 12(3) RPBA. There is no right to file later evidence. The insufficiency of disclosure was raised already by the SD and had been the subject of the examination proceedings. Any measurement results should therefore have been submitted earlier, Art. 12(5) RPBA.

In summary, the Board did not find it convincing that the effect which was the core of the invention actually happened. The disclosure would not enable the skilled person to achieve the claimed fusion – even less so at an industrially applicable scale. Since the invention was not disclosed in a manner enabling it to be carried out, it also did not meet the requirements of industrial applicability and was hence not patentable, Art. 52(1) EPC, Art. 57 EPC.

The Board concluded that due to the insufficiency of disclosure and lack of industrial application, a prior art search would have been meaningless.

The purpose of a search is to discover prior art that is relevant for determining novelty and inventive step, Rule 61(1) EPC. Carrying out a search for an invention, that is not patentable for reasons that do not involve any comparison with prior art would have served no purpose.

Therefore, the Board concluded that the ED was right in refusing the application under Art. 83 EPC and Rule 42(1) (e) EPC. There was also no fault in the decisions of the SD nor the ED not to carry out a search.