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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?

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Referrals pending before the EPO Enlarged Board of Appeal

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