More Rule Changes for the better at the EPO – Lack of unity and further searches in the regional phase

November 2014

Applicants may enter the European regional phase at the European Patent Office (EPO) from a PCT application.  The EPO may or may not have acted as the International Searching Authority (ISA) for the PCT application.

Currently under Rule 164 EPC, when the EPO is not the ISA, the EPO will carry out a supplementary search.  If the patent application is considered by the EPO search examiner not to comply with the requirement for unity of invention, the supplementary European search report will only be drawn up on the parts of the application which relate to the invention first mentioned in the claims.  Any further invention can only be prosecuted by filing a divisional application, which is costly. 

When the EPO is the ISA, a finding of lack of unity from the EPO during their search in the international phase can be addressed by requesting an additional search.  This is seen by some to penalise applicants who have not used the EPO as the ISA.  The EPO has decided to address this by amending Rule 164.

Under the new Rule 164, from 1 November 2014, applicants will be put on an even footing at the EPO in respect of unity objections, regardless of which ISA searched the PCT application. 

Whether the EPO was the ISA or not, having received a non-unity objection through search at the EPO, applicants will be entitled to have further EPO searches carried out.  Furthermore, either route will allow applicants to select, from all the inventions searched by the EPO, the invention to be prosecuted in the European phase.

The new Rule provides a 2-month period to have any other invention(s) searched, either in response to issue of a partial supplementary search report or, where the EPO has acted as the ISA and an unsearched invention is claimed at the start of EPO examination, in response to an initial communication from the Examining Division. For cases where the EPO was the ISA, applicants will thus be able to request an additional search even if they opted not to pay an extra search fee to the EPO during the international phase. A further search fee may later be refunded if the applicant contests a finding of lack of unity and the Examining Division finds that the communication regarding a further search requirement was not justified.

For cases where the EPO was not the ISA, the new rule will apply where the supplementary European search report is drawn up on or after 1 November 2014.

For cases where the EPO was the ISA, the new rule will apply where an EPO examination communication has not been issued by 1 November 2014.

The full decision of the Administrative Council of the EPO can be found here.

This update was prepared by Dr Claire Irvine one of the partners in the Life Sciences team of our London office +44(0) 207 776 5100. 

If you would like further advice on this or any other Patent matter, please contact Dr Claire Irvine or your usual HGF representative or visit our Contact Page to get in touch with your nearest HGF office.