G 0001/89 - Non-unity a posteriori - #34

Citation rank: 34
No. of citations: 115

G 1/89 and G 2/89, in consolidated proceedings, are concerned with the question of how non-unity should be assessed by the European Patent Office acting as International Search Authority (ISA) under the PCT. In particular, G 1/89 and G 2/89 were concerned with the question of whether the EPO as ISA may carry out a non-unity assessment "a posteriori", i.e., taking the prior art into account, or whether the EPO should rely on the subjective understanding of the applicant of his own invention, i.e., carry out the non-unity assessment "a priori". The findings of G 1/89 and G 2/89 regarding the assessment of non-unity are not confined to the PCT procedure, but are also applicable to non-unity under the EPC.

G 1/89 was the first Enlarged Board of Appeal case, in which the President of the EPO referred questions to the Enlarged Board under Art. 112(1)(b) EPC, i.e., where different Boards of Appeal have given different decisions on a particular question. Specifically, it was decision W 3/88, which found that that EPO acting as ISA should not - contrary to the PCT Guidelines and the common practice at that time - assess unity of invention in an a posteriori manner. The Board in W 3/88  found that this would amount to a substantive examination of novelty and/or inventive step during the search stage, which a search examiner was not competent to carry out.

The Enlarged Board firstly observed that the question of whether the EPO as ISA is competent to make an a posteriori assessment of the unity-of-invention requirement only came up, because under the EPC (as well as under the PCT) search and examination are two sequential and distinct steps in the procedure, and at the time of W 3/88 search and examination were carried out by different examiners at the EPO. A search examiner at the EPO at that time had (arguably) less experience or formal training in assessing novelty and inventive step. The Board in W 3/88 found that the assessment of non-unity should be carried out by the EPO/ISA taking the "general inventive concept" subjectively chosen by the applicant as a basis. [comment: At the time of W 3/88, search and examination was still carried out by different EPO examiners, one in The Hague (for search) and one in Munich (for examination). Since the implementation of the BEST program ("bring search and examination together"), search and substantive examination are carried out by the same person.]

The Enlarged Board did not agree to the notion that a search examiner was not competent to assess novelty and inventive step. They stated:

"[A]lthough the objective of the search is in principle limited to discover and report on relevant prior art for the purpose of assessing novelty and inventive step, which is finally the task of the examining authority (i.e. the IPEA and/or the designated Office under the PCT and the Examining Division under the EPC respectively), it is obvious that in many instances the search examiner needs to form a provisional opinion on these issues in order to carry out an effective search. Otherwise, he would simply be at a loss how to judge the relevance of the documents in the prior art and how to arrange the search report accordingly."

Hence, the Enlarged Board found that a search examiner was very well capable to carry out a provisional assessment of novelty or inventive step for the purposes of an a posteriori assessment of unity. The provisional assessment of novelty and inventive step would in any case only have procedural effect (namely determining the number of additional search fees to be paid, if any), such that the substantive assessment of novelty and inventive step would still be left to the examination divisions.

With reference to the then current PCT Guidelines, the Enlarged Board of Appeal decided that the EPO as ISA should carry out the non-unity assessment a posteriori.

The Enlarged Board then also commented on the manner in which the a posteriori assessment of non-unity was to be carried out. They found that it was to be carried out with caution. Specifically, they stated:

"It may be added that the consideration by an ISA of the requirement of unity of invention should, of course, always be made with a view to giving the applicant fair treatment and that the charging of additional fees under Article 17(3)(a) PCT should be made only in clear cases. In particular, in view of the fact that such consideration under the PCT is being made without the applicant having had an opportunity to comment, the ISA should exercise restraint in the assessment of novelty and inventive step and in border-line cases preferably refrain from considering an application as not complying with the requirement of unity of invention on the ground of lack of novelty or inventive step." (point 8.2 of the reasons)

This part (point 8.2) of G 1/89 is in fact the statement which is most often cited by other Boards of Appeal decisions, and hence the reason why G 1/89 made it to this list of the 100 most-cited Boards of Appeal decisions.

Remark: There is a dramatic drop in the yearly number of citations of G 1/89 at around 2010 (see small graph on the top right of this blog post). This, however, is not because decisions G 1/89 and G 2/89 lost their relevance in any way. The sudden drop is soley due to the fact that the EPO installed a new non-unity review procedure, in which a review panel consisting of three members of the first instance, normally the director of the search examiner who issued the invitation to pay additional fees, the search examiner himself, and an examiner with special expertise in unity of invention took over responsibility for review cases from the Boards of Appeal (see OJ 5/2010, p. 320). In other words, G 1/89 and G 2/89 continued to be relevant in review cases, but they are no longer cited by Boards of Appeal.

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Headnote:

The agreement between the European Patent Organisation and WIPO dated 7 October 1987, including the obligation under its Article 2 for the EPO to be guided by the PCT guidelines for international search, is binding upon the EPO when acting as an ISA and upon the Boards of Appeal of the EPO when deciding on protests against the charging of additional search fees under the provisions of Article 17(3)(a) PCT. Consequently, as foreseen in these guidelines, an international application may, under Article 17(3)(a) PCT, be considered not to comply with the requirement of unity of invention, not only "a priori" but also "a posteriori", i.e. after taking prior art into consideration. However, such consideration has only the procedural effect of initiating the special procedure laid down in Article 17 and Rule 40 PCT and is, therefore, not a "substantive examination" in the normal sense of that term.

The full text of the decision can be accessed here.

Quotes from decisions citing G 1/89 can be found here.