When before the EPO, the EPO’s search counts

Published on: 10 October 2013
by Dr. Christian Köster, Patent Attorney at Dennemeyer & Associates, Munich

When an international patent application (PCT application) enters the European phase, the European Patent Office (EPO) draws up a supplementary European search report unless the EPO itself acted as the International Searching Authority (ISA) for the PCT application. Typically, both the international search and the supplementary European search cover the same subject matter. However, it may result that the supplementary European search is restricted to a certain subject matter, whereas the international search covered a broader or deeper subject matter. The question arises whether the applicant in such a scenario may rely on the subject matter searched by the ISA, but not by the EPO in the substantial examination procedure.

In a recent decision, a Board of Appeal of the EPO emphasized the basic principle that claims whose subject matter has not been covered by a search report drawn up by the EPO will not be examined by the EPO for novelty or inventive step (decision T 1981/12 of 24 September 2013, 1st Catchword). It was further held by the Board that any subject matter which was covered by a search report drawn up by an ISA other than the EPO, but which was not covered by the supplementary search report drawn up by the EPO, must not be regarded as subject matter which would be available for novelty and inventive step analyses (see T 1981/12, 2nd Catchword). The claims directed to subject matters only covered by the search report of the ISA were consequently rejected.

In addition, the Board dealt with the question whether an applicant is entitled to have a further search report drawn up to cover allegedly non-unitary inventions where on entering the European phase the application documents are considered by the EPO not to meet the requirements of unity. The result of such a unity objection is that a supplementary European search report is drawn up on only those parts of the application which relate to the invention first mentioned in the claims. The Board of Appeal analyzed the Travaux préparatoires to the Implementing Regulations to the revised European Patent Convention (EPC 2000) in this respect and concluded that an applicant, who finds himself in such a situation, is actually not entitled to a further search report (see T 1981/12, 3rd Catchword).

While the Board of Appeal itself might have been somewhat uneasy about their legal conclusions (see 1981/12, point 12.1 of the Reasons), it apparently saw no other way than to decide as summarized above. No European Patent will therefore be granted on a subject matter which was only searched by the ISA, but was not searched by the EPO for lack of unity. As it is the usual case with unity objections, there remains however the possibility to salvage unsearched subject matters in a divisional application.