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Monday, 6 August 2007

The EPO rules on a technicality

The IPKat's friend Geoff Dallimore of Boult Wade Tennant writes:

"In the July 2007 EPO journal, decision T 1242/04 was published in English (although it dates back to last year). It discusses the "no search" practice of the EPO and their justification of it in light of Rule 45 EPC. Thought this might be of interest to some of your readers, and I've written a short article about it because I know it will be of interest to some of my more business method type clients."
(Right: is this how some applicants see the EPO Search Division?)

In the decision the EPO search division had apparently taken their no-search stance to "send a message" to applicants who sent them non-technical applications. The Board, however, took rather a different view and stated (with IPKat emphasis on the important points):

"8.2 The search is an essential element of the grant procedure, being designed to identify prior art relevant to the application. The intention is to make it possible to determine, on the basis of the documents mentioned in the search report, whether and to what extent the invention is patentable (see R. 44(1) EPC). Knowledge of the prior art forms the basis for examination of the application by the examining divisions. It is also important for applicants, giving them a basis for deciding whether to continue prosecuting their applications and have them examined. Lastly, it is also important for the public and especially for competitors, enabling them to gain an idea of the scope of any protection that might be granted. For that reason the legislator has also stipulated that the results of the duly performed search must be published together with the European patent application eighteen months after the date of filing or priority (see Art. 93(2) EPC). The fundamental importance of the search is also evident from the facts that it constitutes a chargeable service of the European Patent Office, that the search fee must be paid within one month after the filing of the application (Art. 78(2) EPC) and that failure to pay the search fee means that the application is deemed to be withdrawn (Art. 90(3) EPC). Likewise, the Guidelines for Examination in the European Patent Office in B-III 2.1 (in the version dated June 2005) stress that the European search is a thorough, high-quality, all-embracing search. Thus it is clear that Rule 45 EPC constitutes an exception and as such must be interpreted narrowly.

8.3 Rule 45 EPC applies to cases which do not comply with the provisions of the Convention to such an extent that it is not "possible" to carry out a "meaningful search" into the state of the art on the basis of all or some of the claims. Thus a Rule 45 declaration is allowed only where a search is not possible. In other cases the search division draws up a partial search report, "so far as is practicable". In the Board's view, Rule 45 EPC relates only to the practicability of a search and not to the potential relevance of its results in subsequent substantive examination. That is clear from the actual wording of the rule, which refers to the impossibility of carrying out a meaningful search in the event of serious violations of the provisions of the Convention, for example a fundamental lack of clarity or the absence of any technical character whatsoever. If these criteria are not met, searching cannot be refused by reference to Rule 45 EPC, regardless of whether the search in the search division's view would not produce any result of significance to subsequent proceedings. In the final analysis, the search is the basis for substantive examination (and now also for the extended European search report under Rule 44(a) EPC) and not vice versa. Moreover, it is not evident that claims directed only to technical features that the search division deems "trivial" could prevent a meaningful search into the state of the art, which in fact ought to be particularly simple in such a case.

8.4 In this light the Board deems that where the application's subject-matter has non-technical aspects, a declaration under Rule 45 EPC may be issued only in exceptional cases in which the claimed subject-matter, i.e. the entire set of claims including all independent and dependent claims, clearly has no technical character."

As regular readers will know, the IPKat's German is a little rusty, so he is glad to see this decision in his own language. Although the decision is in a relatively obscure area of patent law, it has potential effects on many European patent applications that lie near the borderline of patentability (wherever that may be). For those applications where technical character is only a possible issue, and not an absolutely clear-cut one, the EPO search division will just have to pull their finger out and perform a search. After all, with a search at the EPO typically costing 1000 Euros, applicants could be justifiably a little peeved if they get effectively nothing for their money.

How to make money for nothing here, here and here.

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