Author: Joanna Peak
27 August, 2014
On 1 November 2014, rule changes will enter into force at the EPO affecting the searches carried out for International patent applications entering the European regional phase. These rule changes will permit applicants more flexibility in deciding on the subject matter to be pursued before the EPO for applications found to lack unity, and should alleviate problems associated with current restrictive search procedures.
International applications for which the EPO acted as International Searching Authority
Under existing practice, if an International application is searched by the EPO as ISA and the EPO considers the claims lacking in unity, the applicant will be invited to pay one or more additional search fees. If the applicant does not pay any additional fees, then they are restricted to pursuing only the searched subject matter (i.e. invention 1) during the European regional phase. In order to pursue the unsearched subject matter, one or more divisional applications must be filed. This can create problems for applicants who decide at the expiry of 31 months that they wish to pursue unsearched subject matter before the EPO because it is necessary to incur the costs of both entering the application into the European regional phase and then filing one or more divisional applications.
With the amendments to Rule 164(2) EPC, applicants will have a second opportunity on European regional phase entry to request a search to cover claims not searched during the International phase. If an additional search is requested, the applicant will be able to elect which of the searched inventions to pursue during further prosecution. It will still be necessary to pursue any additional inventions via divisional applications. However, in contrast to current practice, the applicant will not be restricted to the subject matter searched during the International phase.
International applications for which the EPO did not act as International Searching Authority
For International applications entering the European regional phase for which the EPO did not act as ISA, a supplementary search is carried out. However, under the existing rules, if the EPO finds that the claims lack unity, only the first invention is searched. The applicant is given no opportunity to pay additional search fees and must file one or more divisional applications if the unsearched subject matter is to be pursued before the EPO.
Under amended Rule 164(1) EPC, the search procedure for International patent applications entering the European regional phase will be brought into line with the search procedure for applications filed directly at the EPO. More specifically, the EPO will carry out a supplementary search and if a lack of unity is found, the applicant will receive a partial search report together with an invitation to pay additional search fees. If additional search fees are paid, the applicant will have the opportunity to pursue any one of the searched inventions. As noted above, the additional inventions will still need to be pursued via divisional applications, if required.
The changes coming into force on 1 November 2014 will take effect for all International applications entering the European regional phase for which: (i) a first communication from the Examining Division has not been drawn up by 31 October 2014 (for applications searched by the EPO as ISA); or (ii) a supplementary European search report has not been drawn up by 31 October 2014 (for applications searched by an ISA other than the EPO).
For more information, please see the Notice from the EPO dated 10 June 2014.