Search Before Examination: T 0913/25 on Rule 63 EPC and Procedural Violations
The Board of Appeal clarifies that Rule 63 EPC does not provide a standalone ground to refuse an application. Substantive objections cannot justify abandoning a search if the technical subject-matter remains identifiable.
The procedural boundary between an application's searchability and its substantive compliance with the European Patent Convention has long been a foundational principle of examination. T 0913/25 reinforces this boundary, addressing a scenario where an Examining Division refused an application by conflating clarity and added subject-matter objections with an alleged impossibility to perform a meaningful search.
How did the Examining Division justify the lack of a search report?
The Examining Division refused the divisional application on three grounds: lack of clarity under Article 84 EPC, added subject-matter under Article 76(1) EPC, and the assertion that without a search report, examination was impossible. The Examining Division argued that the term "slotless electrical machine" contradicted the description and extended beyond the content of the earlier application as filed. Consequently, it concluded that a meaningful search was impossible under Rule 63(2) EPC.
Why does Rule 63 EPC not provide a standalone ground for refusal?
The Board of Appeal identified a fundamental error of law. Rule 63 EPC governs situations where a meaningful search cannot be performed, but it does not create an independent legal basis to refuse an application simply because a search report is missing (reasons 1.2). The Board emphasised that search forms the foundation of examination, not the other way around (reasons 1.6).
Even if objections under Article 84 EPC or Article 76(1) EPC exist, this does not justify abandoning the search if the main technical subject-matter can be sufficiently identified. In this case, the applicant had repeatedly specified the subject-matter as a "slotless motor". The Examining Division improperly conflated substantive patentability requirements with the practical feasibility of conducting a search (reasons 1.5).
How should compound technical terms be interpreted under Article 84 EPC?
The clarity dispute centred on the expression "slotless electrical machine". The Examining Division applied an isolated, literal reading of the word "slot" found in certain mechanical contexts within the description. The Board rejected this approach, noting that "slotless motor" has an established technical meaning: a machine where the stator side facing the rotor lacks the characteristic alternation of teeth and slots (reasons 2.11).
A compound technical term must not be decomposed and interpreted purely semantically when its meaning in the relevant technical field is well established (reasons 2.7). Furthermore, the Examining Division maintained its clarity objection based on paragraph [0047] of the description, even though the applicant had explicitly deleted this paragraph during the proceedings.
What triggered the reimbursement of the appeal fee?
The Board found two substantial procedural violations justifying the reimbursement of the appeal fee under Rule 103(1)(a) EPC. First, the Examining Division ignored the applicant's clear instructions regarding the technical field to be searched and failed to provide substantive reasons why searching "slotless machines" was impossible. This violated the requirement for a reasoned decision under Rule 111(2) EPC (reasons 7.2).
Second, by basing its clarity objection on the deleted paragraph [0047], the Examining Division violated Article 113(2) EPC. This provision strictly requires decisions to be based only on the text submitted to it, or agreed, by the applicant (reasons 7.3).
What must practitioners remember when facing a refusal to search?
When an Examining Division issues a communication under Rule 63(1) EPC suggesting that a search is impossible due to clarity or added subject-matter issues, applicants should explicitly and repeatedly define the core technical subject-matter to be searched. The ruling in T 0913/25 confirms that substantive objections do not absolve the European Patent Office from its duty to perform a search if the technical concept is identifiable. Furthermore, practitioners should rigorously check whether a refusal relies on description paragraphs that have already been deleted. Such an oversight constitutes a substantial procedural violation under Article 113(2) EPC and can provide grounds for remittal and reimbursement of the appeal fee.
Sources
Further Reading
Articles related to the topics covered above.
Interlocutory Revision and the Devolutive Effect: Board 3.5.01 on Secret Notes
Board 3.5.01 identifies a substantial procedural violation where an examining division placed a substantive analysis of an appeal in the non-public electronic file. The decision also heavily criticises the arbitrary replacement of examiners.
Policing the Extent of Opposition: T 1486/23 on Unopposed Claims and Amendments
Board 3.4.01 confirms that independent claims falling outside the original extent of opposition can only be examined for compliance with the EPC to the extent of their amendments, shielding them from delayed validity attacks.
Fixed Deadlines Over Subjective Events: T 0712/24 on the Discretion to Admit Late Requests
When an opposition division changes its preliminary opinion during oral proceedings, does it lose the discretion to reject new claim requests? T 0712/24 clarifies the strict boundaries of Article 114(2) EPC.