Part II. Application not searched. Application not searched due to the presence of certain subject matter

Transcription

1 II.7. II.7.1. Application not searched This section relates to cases where the application relates entirely or in part to subject matter which the ISA is not required to search, or where all or part of the application fails to comply with the requirements of the PCT to such an extent that a meaningful search cannot be carried out. In such cases, the ISA will not search the application (or the part of the application affected) and will issue a declaration to inform the applicant and the IB of this. Where only part of the claimed invention is searched, the search report will be limited to exclude documents relevant to the affected part and this "partial search report" will be accompanied by a declaration. Those parts of the application which are not searched, need not be subject to the WO-ISA or to International Preliminary Examination (R66.1(e) PCT) It is the policy of the EPO not to prepare a WO- ISA or to perform International Preliminary Examination on subject matter which has not been searched. Application not searched due to the presence of certain subject matter No search report Art.17(2)(a)(i) PCT If the ISA considers that the International application relates to subject matter which it is not required to search according to the Rules, then the ISA informs the applicant and the IB that no search report will be prepared. Partial search report Art.17(2)(b) PCT Where the subject matter in question appears in certain claims and not others, then only the claims affected are excluded from the search and the search report indicates which claims have not been searched (a partial search report) and cites the relevant documents for the other claims according to Art.18 PCT. Art.17(2)(b) PCT & R43.9 PCT Where certain subject matter is searched and other subject matter is not searched, the search report must indicate which claims have been searched and which have not. Claims may also relate in part to subject matter which the ISA is not obliged to search and in part to subject matter which should be searched. This means that Art.17(2)(b) PCT is applied mutatis mutandis to part of a claim, see the example given in S&E-GL Excluded subject matter The subject matter which ISAs are not obliged to search is given in R39 PCT and corresponds to subject matter which is not considered patentable in many jurisdictions (including the EPC). The corresponding Article of the EPC, which forbids the patenting of the subject matter mentioned in R39 PCT is also given in the following sections II to II R39.1 PCT relating to: - scientific and mathematical theories - plant or animal varieties - essentially biological processes producing: - plants or - animals - schemes/rules/methods for doing business - schemes/rules/methods for mental acts - schemes/rules/methods for playing games - methods of treatment / diagnosis - presentations of information - computer programmes [For further explanations see the following sections II to II.7.1.6] Art.19 PCT Amendments not allowed PCT-AG I, 296 Where the ISA issues a declaration replacing the International search report under Art.17(2) PCT, the applicant is not Art.19 PCT. This is only applies where no search is performed at all - see "II.11 - Amendment under Art.19 PCT". Limitation of examination The EPO applies R43bis.1(b) PCT and R66.1(e) PCT and limits the scope of the examination in the WO-ISA to exclude from examination subject matter not searched due to Art.17(2)(a)(i) PCT & R39.1 PCT. Furthermore, where the EPO also acts as IPEA, the same subject matter excluded from International search and from examination in the WO-ISA by R66.1(e) PCT, is also excluded from International preliminary examination according to Art.34(4)(a)(i) PCT & R67.1 PCT. 116

2 R43bis.1(b) PCT [by reference to R70.2(d) PCT] & R66.2(a)(vi) PCT The WO-ISA or IPEA written opinion must indicate this limitation of the examination. Consequences in European phase T613/99 In the European regional phase, where the EPO acting as ISA has refused to search certain subject matter of the claims because they fall under the subject matter which may be excluded from the International search according to Art.17(2)(a)(i) PCT and R39.1 PCT, R86(4) EPC [since renumbered to R137(4) EPC and as of 1.Apr.2010 renumbered again to R137(5) EPC]* does not exclude such subject matter from forming the basis for further amendments in the European phase, even though it has not been searched (in this case the claims which were not searched in the PCT were reformulated into an allowable patentable form in the European regional phase). * According to R137(4) EPC [as of 1.Apr.2010 renumbered to R137(5) EPC]- amended claims may not relate to unsearched subject matter which does not combine with the original claimed invention or group of inventions to form a single general inventive concept. This rule was introduced to prevent a broad description from acting as a reservoir for amendment of the claims. In particular it prevents applicants hiding the true invention in the description and only introducing it into the claims after the search. However, the above decision found that subject matter present in the claims on filing, but not searched, because it was excluded from search by R39.1 PCT, can still form the basis for amendment of the claims in the European procedure. II R39.1(i) PCT II R39.1(ii) PCT Theories relating to scientific and mathematical theories See also Art.52(2)(a) EPC Plant, animal varieties relating to plant or animal varieties and essentially biological processes for the production thereof, except microbiological processes and the products thereof. See also Art.53(b) EPC II R39.1(iii) PCT OJ 2001, 482 & OJ 2002, 260 OJ 2009, 206 & OJ 2002, 52 II R39.1(iv) PCT Business methods etc relating to schemes, rules and methods of doing business, performing mental acts or playing games. See also Art.52(2)(c) EPC The EPO adopts a very strict approach with regard to applications for business methods. These are neither searched (R39.1(iii) PCT) nor examined (R67.1(iii) PCT) by the EPO as ISA and IPEA. Applications for business methods are also subject to the limitation of the EPO's competence as ISA, where the applicant is a resident or national of the USA (subject to the exception that if a national or resident of an EPC state is a co-applicant, then the limitation does not apply). For more details see "II Limitation of the EPO's competence as ISA". Methods of treatment / diagnosis relating to method of treatment* of the human or animal body by surgery or therapy and diagnostic methods. See also Art.53(c) EPC * The EPC explicitly forbids the patenting of methods of treatment of the human or animal body by surgery or therapy according to Art.53(c) EPC. When the EPO acts as ISA, it is not obliged to search claims directed to a method of treatment as such. However, when a claim formulated as a method of treatment relates to the use of a chemical compound for a method of treatment, the claim is searched taking into consideration how it could be reformulated in the European procedure in accordance with the decision G5/83 of the EPO Enlarged Board of Appeal (the Swiss type claim) or according to the formulation Compound/composition X, for use in treatment of disease Y [Art.54(4)(5) EPC]. Effectively a method of treatment claim characterised by the use of a certain chemical compound or group of chemical compounds will be searched by the EPO as ISA as though drafted in an allowable Swiss type or product for use format. 117

3 B-VIII, 2 A method of treatment claim not patentable according to Art.53(c) EPC is for example: "A method of treating disease X, by administering compound Y" A Swiss type claim, considered allowable under Art.53(c) EPC by the EPO Enlarged Board of Appeal (G5/83), reads thus: "Use of compound Y for the manufacture of a medicament, for the treatment of disease X" A product for use claim, considered allowable under Art.53(c) EPC reads thus: Compound/composition X, for use in treating disease Y Under the EPC, such a claim would be considered to be novel over the use of the same compound/composition in the treatment of a different disease [Art.54(5) EPC]. If, however, the claim relates to a method of treatment characterised by method features (e.g. dosage instructions), then the EPO may refuse to search the claim. The question of dosage methods is pending before the Enlarged Board of Appeal of the EPO under decision number G2/08. The contentious issue is: can a dosage feature be incorporated into a claim directed to a medicinal indication (Swiss claim or for use claim) of a compound or composition which dosage feature both differentiates that claim over the use of the same compound/composition in the treatment of the same disease in the prior art and is not excluded from patentability under Art.53(c) EPC? An example of such a situation is as follows: Prior art: Use of compound X for the treatment of disease Y and is administered once per day. Claim 1: Compound X, for use in the treatment of disease Y, wherein compound X is administered twice per day. The question posed by G2/08 is: can that claim 1 be novel over the prior art and also not be excluded from patentability under Art.53(c) EPC. If the Board of Appeal answers this question in the affirmative, the EPO might then change the above guideline and start to search such claims. II R39.1(v) PCT II R39.1(vi) PCT II.7.2. Presentations of information relating to presentations of information. See also Art.52(2)(d) EPC. Computer programmes The ISA is not required to search applications relating to computer programmes, to the extent that the ISA is not equipped to search them. See also Art.52(2)(c) EPC. Application not searched due to serious deficiencies No search report Art.17(2)(a)(ii) PCT Where the application has a description and/or claims and/or drawings which fail to comply with the prescribed PCT requirements to such an extent that no meaningful search is possible, then the ISA issues a declaration informing the applicant and the IB that no search report will be made. Partial search report Art.17(2)(b) PCT Where the unsearchable subject matter appears in certain claims and not others, then only the claims affected are excluded from the search and the search report indicates which claims have not been searched (a partial search report) and cites the relevant documents for the other claims according to Art.18 PCT. Art.17(2)(b) PCT & R43.9 PCT Where certain subject matter is searched and other subject matter is not searched, the search report must indicate which claims have been searched and which have not. Frequently, some claims relate in part to subject matter which cannot be searched and in part to subject matter which can be searched. In such cases, Art.17(2)(b) PCT is applied mutatis mutandis to part of a claim, see the example given in S&E-GL Deficiencies rendering meaningful search impossible Art.17(2)(a)(ii) PCT applies where the International application fails to conform to the requirements of the PCT, in particular those of clarity, conciseness and support of the claims (Art.6 PCT) and sufficiency of disclosure (Art.5 PCT) to such an extent, that the ISA is not able to perform a meaningful search. 118

4 The EPO has, since 2000, adopted a very strict policy with regard to this kind of application in particular in the areas of chemistry, biotechnology and telecommunications (see OJ 2000, 228). In these technical areas applicants often file applications with claims of such obscurity and great breadth that the examiner charged with the search is unable to determine what the claimed invention really is and consequently a search on the whole claimed scope is neither possible nor meaningful. These applications, often called "Complex Applications", usually warrant a partial search report limited to certain claimed subject matter which appears to represent the actual contribution which the applicant has made over the state of the art and this is usually derived from a dependent claim, or from the description. In cases of excessive numbers of claims, the examiner may refer to the description in an attempt to distil what has actually been invented (if anything). In the most serious cases no search report is issued at all (i.e. Art.17(2)(a)(ii) PCT is applied) and only a declaration replacing the search report in accordance with Art.17(2)(a) PCT is issued. Risks for the applicant When Art.17(2) PCT is applied, the ISA decides what to search and what not to search without any communication with the applicant. This is risky for the applicant, who cannot challenge this decision of the ISA. Furthermore, any subject matter excluded from the search need not be examined either in the WO- ISA or in PCT Chapter II (R66.1(e) PCT - the EPO makes strict use of this rule). The subject matter in question is only examined in as far as is necessary to demonstrate that it is so deficient that it cannot be searched or examined. This also carries the risk that the applicant might not be Art.19 PCT - see paragraph below: This finding cannot be challenged in the International phase. However, the applicant may challenge the findings which underlie a limitation of the search in the national or regional phase. If the applicant successfully argues his case in examination at the EPO, the EPO may perform an additional search free of charge during examination proceedings (C-VI, 8.2). Art.19 PCT amendments not allowed PCT-AG I, 296 Where the ISA issues a declaration replacing the International search report under Art.17(2) PCT, the applicant is not Art.19 PCT. For more details, see - "II.11 - Amendment under Art.19 PCT". Challenge by applicant The applicant has no way of challenging the partial search report or the reasons behind it once it has been issued (unlike the case of lack of unity). Novelty overflow There are cases where a claim, although clear, is drafted in such a way that the examiner retrieves so many documents pertinent to the novelty of that claim, that to cite them all is not feasible (overflow). In such cases, it is not meaningful to cite all of them, since it is clear that such claims cannot be maintained in later examination proceedings. The applicant will have to limit his application to a dependent claim or other preferred embodiments present elsewhere in the application. Failure to file a sequence listing R5.2(a) PCT & R13ter.1(b) PCT Where the International application disclosures one or more nucleic acid or amino acid sequences and the applicant has not already provided this, the ISA can require the applicant to supply a paper sequence listing (where the application is filed at least in part, on paper). R13ter.1(a) PCT The ISA can also require the applicant to file an electronic sequence listing, where the applicant has not already supplied this. R13ter.1(d) PCT Where the applicant has failed to file a paper and/or electronic sequence listing and/or pay the required late furnishing fee on time, the ISA can limit the search to the extent that the search cannot be carried out without them. See "II Biological sequence listings and International search". See the S&E-GL This possibility is used by the EPO. Time limit for preparing a declaration of no search / partial search report R42.1 PCT The declaration of a "no search" according to Art.17(2)(a) PCT must be issued within 119

5 S&E-GL 9.40 the same time limit as the International search report. See "II.6 - Time limit for completing the International search". The WO-ISA in limitation cases Where a declaration replacing the search report, or partial search report has been issued under Art.17 PCT, even if the ISA is not able to examine the issues of novelty, inventive step and industrial applicability, a WO-ISA is still prepared. For a "No Search" declaration replacing the search report, the WO-ISA simply addresses the issues which prevent an opinion on novelty, inventive step and industrial application from being given on the claimed subject matter. In the case of a partial search, the WO-ISA addresses novelty, inventive step and industrial application in as far as the application was searched (R66.1(e) PCT) and also addresses the issues which led to the search (and examination in the WO-ISA) being limited. II.8. II.8.1. Non-unity in International search Substantive issues Art.3(4)(iii) PCT The International application must comply with the prescribed requirement of unity of invention. Despite the stern language of Art.3(4)(iii) PCT, the sanction which applies when the International application does not comply with the requirement of unity of invention is only that the search and examination of the application in respect of inventions other than that first mentioned in the claims are conditional on the applicant paying further (search or examination) fees. The requirements of unity are prescribed in R13 PCT: R13.1 PCT An International application must relate to one invention only or to a group of inventions linked to form a single general inventive concept. R13.2 PCT Where an International application contains a group of inventions, unity is fulfilled only where there is a technical relationship among those inventions involving one or more common or corresponding special technical features A special technical feature is one which distinguishes the invention as a whole over the state of the art. R13.3 PCT If an International application contains a group of inventions, whether these appear in separate claims or as alternatives within a single claim is of no relevance for the judgement of unity. Dependent claims R13.4 PCT As long as the International application is unitary under R13.1 PCT, then a reasonable number of dependent claims is allowed, even if the features of any dependent claims could themselves be considered to be a separate invention. Those additional features characterising a dependent claim are taken in combination with the technical features of the independent claim which it depends on. As such the dependent claim contains the allegedly patentable and unifying features of the unitary independent claim. A posteriori non-unity G1/89 & G2/89 The EPO can request extra search fees under Art.17(3)(a) PCT, for a lack of unity a posteriori (i.e. where unity is found to be 120