skip to main content skip to accessibility policy

Articles & Updates – Details

6 September 2011

Case G 1/11 - Referral under Art 112(1)(a) EPC by the Legal Board of Appeal J 21/09

Case G 1/11 - Referral under Art 112(1)(a) EPC by the Legal Board of Appeal J 21/09

When the EPO’s Search Division deems an application to lack unity it will draw up a partial European search report on the invention first mentioned in the claims.  The applicant then has a two month period to pay additional search fee(s) to have the remaining invention(s) searched.  This is necessary if the applicant is to challenge the non-unity opinion during substantive examination.

According to Rule 64(2) EPC, the additional search fee(s) will be refunded if during substantive examination the Examining Division is persuaded that the lack of unity objection is unjustified.  An adverse decision on unity by the Examining Division is an appealable interlocutory decision.

The present referral is derived from an appeal before a legal board of appeal (J 21/09), which had initially been sent to a technical board of appeal.  There is clearly some procedural uncertainty at the EPO regarding appeals from decisions pursuant to Rule 64(2) EPC.   As such, in J 21/09, the following question has been referred to the Enlarged Board of Appeal:

Should the handling of an appeal against a Decision of the Examining Division refusing the refund of search fees under Rule 64 (2) EPC, that has not been issued together with a decision to grant a European patent or a rejection of a European Patent application, be the responsibility of a Technical Board of Appeal or a Legal Board of Appeal?

Useful links

Referrals pending before the EPO Enlarged Board of Appeal

Bookmark and Share

Follow us

Newsletter subscriptions

In support of our environmental policy we encourage email subscriptions to receive our patent and trade mark newsletters as soon as they are published. Please send your contact details to

For RSS users

Our RSS news feeds allow you to see when we have added new content to our website so you can get the latest site updates in one place, as soon as they are published.

Social media

Privacy Policy

We are committed to protecting and respecting your privacy. To understand our views and practices regarding your personal data and how we will treat it please see