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R. 63 - Incomplete Search

Rule 63 EPC 2000 (Rule 45 EPC 1973) - Incomplete Search

T 688/05 - Ticket auctioning system/TICKETMASTER

in
Date of the Decision: 
2007-09-19
Headnote: 
The concept of “novelty” in Article 54(1) EPC is only defined for “inventions”. It does not apply to the exceptions enumerated in Article 52(2) EPC. By analogy it could be held that claim features which do not contribute to the definition of an “invention” cannot be classified as new or not new in the sense of Article 54 EPC. Nevertheless they may well form the only logical link between technical features resulting from their implementation. They must therefore be taken into consideration for the examination as to inventive step while at the same time not being permitted to contribute to it (see point 4.5 of the reasons).

T 1873/06 - Optimized drug delivery/OPTIMATA

in
Date of the Decision: 
2007-09-13
Catchword: 

If an application for which no search has been carried out, inter alia for lack of clarity of the claims, has been refused for the same reason, a board of appeal need only examine whether the claims fail to comply with the clarity requirement of Article 84 EPC to such an extent that it is not possible to carry out a meaningful search (reasons, point 4.2).

Summary and Comments: 

This decision is not relevant as it only discusses whether the particular claim involved was clear enough to carry out a search.

T 1242/04 - Provision of product-specific data/MAN

in
Date of the Decision: 
2006-10-20
Headnote: 
Rule 45 EPC relates only to the practicability of a search and not to the potential relevance of its results in subsequent substantive examination (Reasons 8.3). Where the application’s subject-matter has non-technical aspects, a declaration under Rule 45 EPC may be issued only in exceptional cases in which the claimed subject-matter, i.e. the entire set of claims including all independent and dependent claims, clearly has no technical character (Reasons 8.4).
Summary and Comments: 

For years it has been common practice of the EPO to issue a no-search declaration under Rule 45 EPC for applications that constituted to the Searcher’s opinion no technical contribution. In applications concerning computer-implemented inventions and business methods, this got to happen very regularly. With this Decision the Board of Appeal, this practice will probably diminish.

More will follow soon…

T 690/06 - Financial records/AUKOL

in
Date of the Decision: 
2007-04-24
Headnote: 
As long as no search has been performed an examining division should normally not refuse an application for lack of inventive step if the invention as claimed contains at least one technical feature which is not notorious (point 8 of the reasons).
Summary and Comments: 

The application concerned in this decision describes a computer-implemented method. The decision itself does not substantially discuss the allowability of the method in the light of Article 52(2) EPC. It deals with under what circumstances the Examining Division is allowed to reject an application without a search being carried out. The Board decided that an application can not be rejected on inventive step as long as no search has been carried out.

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