PCT : Lack-of-unity objection
26.05.2001
On April 7, 2000, the Technical Board of Appeal 3.3.2 has delivered a decision relating to the lack-of-unity objection raised "a posteriori" during international preliminary examination
On April 7, 2000, the Technical Board of Appeal 3.3.2 has delivered a decision relating to the lack-of-unity objection raised "a posteriori" during international preliminary examination (W6/99 published in the Official Journal of EPO 4/2001).The factsOn October 29, 1997, a Company X has filed an international PCT patent application.On May 22, 1998, the EPO, acting as International Searching Authority (ISA), has notified the applicant that the application comprised 5 inventions. As the search had been conducted on one invention, the applicant was invited to pay 4 additional search fees in accordance with Article 17(3)a) PCT and Rule 40.1 PCT.The applicant had protested and paid all the additional fees requested.On September 2, 1998, the EPO, acting as the International Preliminary Examining Authority (IPEA), has invited the applicant to restrict the claims or to pay additional examination fees pursuant to Article 34(3)a) PCT and Rule 68.2 PCT.On September 3, 1998, the applicant had paid under protest all the additional fees requested. It has substantiated its protest by saying that the unity of invention is demonstrated by the unit of the problem solved by the invention.On October 23, 1998, the EPO has notified the applicant that the lack-of-unity objection was upheld and has invited the applicant to pay a protest fee for further examination of the protest.On October 23, 1998, in a first written opinion, pursuant to Rule 66 PCT, the EPO has also notified the applicant that the disclosure in a citation was prejudicial to the novelty, the issue of inventive step being also discussed in this written opinion.Reasons for the decisionLack of unity in an application is a deficiency which must be indicated by IPEA in a first written opinion including the reasons for the objection (Article 34(2) c) and Rule 66.2 a) PCT).In the present case, the Examiner has simultaneously :- invited the applicant to restrict the claims or to pay additional fees pursuant to Article 34(3) and Rule 68.2 PCT ; and- notified a first written opinion concerning the novelty and the inventive step according to Article 34(2) c) and Rule 66.2 a) PCT.This does not comply with the PCT Preliminary Examination Guidelines stipulating that an invitation pursuant to Rule 66.2 PCT is to be issued after the applicant's reply to the lack-of-unity objection has failed to overcome this objection (chapter VI-5.13, third sentence).However, the Technical Board of Appeal has emphasized that this chronological order for issuing a first written opinion Rule 66 PCT and an invitation to pay additional fees does not prevent that during the preliminary examination procedure the IPEA repeats the justified invitation to pay additional fees that the ISA had issued during the search procedure, on the basis of the same grounds if the circumstances remain unchanged.
