Several years ago when I was sitting my European Qualifying Examinations I had to deal with a particularly nasty unsearched subject matter objection. There was a certain irony: if I am not allowed to amend based on the description why am I being made to prepare for and sit an examination testing my ability to do just that. Over the course of the following years I have thankfully had relatively few unsearched search matter objections to deal with.
There is sound legal basis in the European Patent Convention (EPC) for an Examiner to object that an amendment is impermissible on the basis that it relates to unsearched subject matter (i.e. subject matter which was not the subject of any of the claims present in the application when the application was searched by the EPO).
There seems to be a fair amount of discretion on the Examiner’s part as to whether he or she raises the objection. But, once raised, these objections are incredibly difficult to overcome. Only the Examiner knows exactly what has been searched and simply because an amendment narrows, rather than broadens, a claim does not mean that the amendment will escape the objection.
If the Examiner will not budge, the consequences can be serious for the applicant. The best case scenario is that you can file a divisional application claiming the “unsearched” subject matter (at additional expense). The worse case scenario is that the deadline for filing divisional applications (now restricted in most cases to two years from issuance of the first examination report) has passed. In that case, there is then no way to obtain patent protection for the “unsearched” subject matter.
Is That Fair & Is That Even Relevant?
You often hear patent practitioners lamenting the EPO’s strict interpretation of some aspects of the EPC. It is true that through a blinkered application of tests which have been developed over the years, the EPO occasionally go too far. But, on the whole, I have some sympathy with them. One can see and understand their overarching aim: to improve/maintain the quality of patent applications, which otherwise could be sacrificed to cost-cutting measures by the applicant. Some cash-strapped applicants may struggle, but the EPO, I think, would argue that this is for the greater good if quality and legal certainty for third parties is maintained.
You can try and see the unsearched subject matter rule from this perspective, and seek to get your dependent claims right on filing. This is of course best practice, but can clash with the EPO’s efforts to restrict the number of dependent claims in an application through hiked-up claims fees. One must use those free dependent claims wisely.
Does The Penalty Fit The Crime?
But is it right that a failing to put all possible fall-back positions into the dependent claims from the start should later lead (in some cases) to an inability to obtain patent protection for those features at all? Features, which for the sake of argument, we will assume are adequately described in the specification. The applicant has surely met their side of the patent bargain, they have disclosed their invention to the public. What about the EPO’s side of the bargin?
Enlarged Board of Appeal decision (G2/92), which addresses the unsearched subject matter provision, relates to the application of the rule where a unity of invention objection was raised during the search of the application. In this particular case, the applicant had the opportunity to pay further search fees for the second invention. They chose not to pay the additional charges, and the applicant then later tried to amend to the second, unsearched, invention. The Enlarged Board of Appeal ruled that this amendment was not allowed.
I think that it is hard to argue that this is an unfair judgement. However, in this case, the applicant should have been aware that if they did not pay the further search fees they would not then be able to seek protection for that subject matter in that application. Further, at the date of this decision, the applicant could still have pursued protection for the second, unsearched invention in a divisional application.
European patent attorneys have made a number of attempts to have their views on policy heard at the EPO. However, the EPO may regard attorneys as an interest group only. So, if applicants feel strongly, they should take the opportunity to contact the EPO via its Directorate Quality Management Support (DQMS) (See Section 8 of the Handbook for Quality Procedures: http://documents.epo.org/projects/babylon/eponet.nsf/0/45c8bcf3d8593a00c12579a50052bd6a/$FILE/Handbook_of_quality_procedures_en.pdf).
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.