Rule 164 - EPO Goes Back to the Future on Searching
The European Patent Office (EPO) has announced that it is revising its rules on the searching of Euro-PCT applications which lack unity, essentially returning to their previous practice of allowing the applicant to pay additional search fees.
This is welcome news for applicants as it dispenses with the harshness of the previous rules and may avoid the need to file unnecessary divisional applications.
Under Article 82 EPC, a European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. The requirement for unity of invention is initially assessed at the search stage and can also be objected to during examination.
For directly-filed European patent applications, if the examiner considers unity is lacking during the European search, a partial search report is issued on the first invention. The applicant is set a period of two months in which to pay additional search fees to obtain a search on the remaining inventions. Any unsearched subject-matter lacking unity may not be pursued in that application: it may only be pursued in a divisional.
Old Rule 164
Until 2010, the EPO adopted a similar approach for Euro-PCT applications, both where it acted as the International Searching Authority (ISA) and where it did not act as the ISA during the international phase. In both cases, if the EPO considered unity was lacking for the claims present on regional phase entry, the applicant had the opportunity to pay additional search fees so the remaining inventions could be searched in the regional phase, even if no additional search fees were paid during the international phase. However, Rule 164, which came into force in 2010, closed this opportunity to applicants who used the PCT route for European patent applications. For Euro-PCT applications where the EPO acted as the ISA, the applicant was bound by its decision regarding search fees paid in the international phase. Where the EPO did not act as the ISA, it simply searched the invention first mentioned in the claims. In both cases no additional search fees could be paid during the regional phase: the applicant had little choice but to limit the claims to the searched invention(s).
The strictness of this rule was seen as highly unfair to many applicants, particularly those based outside Europe. For example, many US applicants nominate the EPO as the ISA, in order to obtain the EPO’s initial view on patentability during the international phase. However, many US applicants were unaware of the strictness of old Rule 164, and consequently did not pay the additional search fees, so only the first invention was searched in the PCT phase. If, by the EPO regional phase, the applicant is only interested in one of the unsearched inventions (perhaps because the first, searched invention has been found to lack novelty), old Rule 164 effectively required them to file a divisional in order to do so. As there is no provision in the EPC for filing a divisional directly from a PCT application, the applicant was faced with entering the EPO regional phase, paying all fees in respect of an invention no longer of interest, simply to enable the filing of a divisional directed to any unsearched inventions. As the filing, additional page and designation fees are not refundable, this considerably added to the cost of patenting in Europe, particularly for long specifications.
Old Rule 164 was even harsher to Euro-PCT applicants where an ISA other than the EPO searched the application during the international phase. The closing of the opportunity to pay additional search fees at the supplementary search stage was seen as particularly unfair to applicants in cases where no non-unity objection was raised in the PCT phase, and some applicants even considered it as a discrimination against those using the PCT procedure compared with direct filing of European applications.
New Rule 164
The EPO has responded to applicants’ concerns by essentially returning to the old procedure and bringing the search procedure for Euro-PCT applications more closely into line with those for direct filed European applications. Where the EPO did not act as the ISA, new Rule 164(1) states the EPO will give the applicant a two month period to pay additional search fees if a lack of unity is raised at the supplementary search phase.
The new procedure will differ slightly where the EPO acted as ISA. New Rule 164(2) indicates the EPO will give the applicant a two month period to pay additional search fees if unity is considered lacking for the claims present on regional phase entry. However, where additional searches are carried out, the EPO will not prepare a full stand-alone search report: instead they will issue the additional search results together with a first examination report, or a Rule 71(3) communication (notice of allowance) and, where appropriate, invite the applicant to restrict the invention to the searched subject-matter.
In both cases, as now any unsearched subject-matter lacking unity may not be pursued in that application. However, new Rule 164(5) states that, in either of the above cases, the additional search fees paid will be refunded on request, and only if during the examination procedure, the examiner considers the request for additional fees was not justified. This new rule also brings the provisions for Euro-PCT applications into line with those for direct European applications.
The new Rule 164 will come into force on 01 November 2014 and will apply to any applications for which the first examination report (where the EPO was the ISA) or the supplementary search report (where the EPO was not the ISA) has not yet been drawn up on that date.
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