Readers may recall from our Autumn 2012 and 2013 editions of this newsletter that we have been railing against amendments to the EPO Guidelines that do not allow an applicant to amend claims to change from one searched invention to another. We complained that the only authority for the new rule was an obiter comment in Enlarged Board of Appeal Decision G02/92.
However, there is now a decision from the Technical Boards of Appeal on this point. It is T158/12 concerning a diesel exhaust treatment system catalyst monitoring. It says (reasons 2.8):
after having chosen one invention (or one group of inventions) to be the subject of examination, this choice cannot be altered once examination of that invention has commenced.
Decision T158/12 also highlights the importance of not withdrawing a claim at first instance. The Applicants did not contest the non-unity objection under Article 82 EPC and simply withdrew the unexamined claims. Because they did not give the Examining Division an opportunity to issue a decision on the issue, the Board of Appeal refused discretion to admit the unexamined claim into proceedings.
With the new foreshortened prosecution process before the EPO (see the article “What’s Going On at the EPO” in this newsletter), the requirement to irrevocably choose between inventions for which search fees have been paid is a significant drawback. If you jump the wrong way you will have difficulty jumping back later or face the great expense and significant delay of filing a divisional application.
We continue to press, through the offices of EPI and by any means, for the Guidelines to reflect the fundamental point in Enlarged Board decision G07/93 that exercise of discretion should take into account all relevant factors. We are lobbying for the new guideline to apply only in the absence of other relevant factors.
We are also in correspondence with the EPO for introduction of a new rule to correspond to PCT rule 68.2 that would allow, upon invitation, for another examination fee to be paid so that another invention that has already been searched can be examined in the same application. This would be of significant benefit to SMEs and applicants of all sizes. Without it, the only choice for applicants is the expense of filing a divisional application, including all the back renewal fees. These can be extremely high and a waste of resources if the previously examined invention is to be abandoned.