Rule 164 EPC is amended with effect from 1 November 2014 to allow a further search of previously unsearched subject matter in European regional phase applications (E-PCT applications). Under the new procedure, the EPO will routinely invite applicants to pay further search fees for any unsearched subject matter present in the claims on file at the start of examination.
If the EPO did not act as International Searching Authority (ISA) and a lack of unity of invention is found during the supplementary European search, the procedure is essentially the same as for a direct EP application; a partial supplementary European search report will issue (based on the first invention mentioned in the claims) with an invitation under amended Rule 164(1) EPC to pay further search fees for second and subsequent inventions.
If the EPO acted as International Searching Authority (ISA) and unsearched subject matter is found in the claims intended to serve as the basis for examination, an invitation to pay further search fees under amended Rule 164(2) EPC will issue for any subject matter that has not already been searched by the EPO as ISA. The results of any further searches will then issue together with the first communication from the Examining Division.
Under previous Rule 164 EPC, it was not possible to pay further search fees in the European regional phase of a PCT application. This was the case whether the EPO did or did not act as ISA.
For E-PCT applications where the EPO acted as ISA, this meant in practice that the applicant was able to pursue only those inventions that had been searched by the EPO in the International phase. If an applicant wished to pursue an invention not searched by the EPO in the International phase, a divisional application needed to be filed.
For E-PCT applications where the EPO was not ISA the procedure was slightly more flexible in that it was at least possible to re-order the claims on entry into the European regional phase to ensure that the most important invention was mentioned first in the claims and so would be the subject of the supplementary European search. However, difficulties arose when no lack of unity of invention objection had been raised in the International phase, but the EPO nevertheless found lack of unity during the European supplementary search. In this case, the applicant was not provided with any opportunity to pay further search fees for the second or subsequent mentioned inventions.
The previous system was generally seen as unfair on applicants. Amended Rule 164 EPC is a welcome change. This briefing intends to highlight some of the procedural aspects of amended Rule 164 EPC (which have been clarified by the recently issued November 2014 edition of the Guidelines for Examination in the EPO).
Amended Rule 164 EPC will apply to any E-PCT application where:
As such, amended Rule 164 EPC will apply to all E-PCT applications which enter the EP regional phase on or after 1 November 2014. As there can be a substantial delay between entry into the EP regional phase and issuance of either the supplementary European Search Report or the first communication from the Examining Division, amended Rule 164 EPC will also apply to many earlier E-PCT applications which entered the regional phase a significant time ago, but which have not yet been subject to search or examination.
Under amended Rule 164(1) EPC, if the EPO finds that the claims intended to serve as the basis for the supplementary search lack unity of invention, a partial supplementary European search report will be drawn up directed to the first invention mentioned in the claims. This partial search report will issue together with an invitation under Rule 164(1)(b) EPC to pay further search fees for the other identified inventions. The term for paying further search fees will be two months. The applicant is not obliged to respond to the invitation. If the applicant pays any further search fees within the term, the final supplementary search report will thereafter issue including the results of any additional searches that have been requested. The applicant will then have the option to choose which of the searched inventions to pursue during substantive examination.
The procedure under Rule 164(1) EPC is therefore in essence the same as for a direct European application (as mentioned in the Guidelines at B-VII, 2.3).
Under amended Rule 164(2) EPC, if the EPO finds that any of the claims intended to serve as the basis for examination have not yet been searched by the EPO, the applicant will be invited to pay further search fees for identified unsearched inventions within a period of two months (Rule 164(2)(a) EPC). Any further search results will then issue together with the first communication from the Examining Division.
The invitation under Rule 164(2) EPC will not issue until after the expiry of the sixmonth term for filing voluntary amendments and, if required, commenting on the written opinion of the EPO acting as ISA (Rule 161(1) EPC, Guidelines C-III, 2.3). An unusual situation could therefore arise where the applicant is required to respond to the written opinion in relation to a searched invention even though they intend to pursue a different, unsearched, invention by paying further search fees. It seems that one option will be to limit the claims to the desired unsearched invention in response to the Rule 161(1) EPC communication and then await the issue of a Rule 164(2) EPC communication giving an opportunity to pay further search fees. Alternatively, this situation can be avoided by amending the claims upon entry into the European regional phase so that they relate to the desired unsearched invention. This will remove the requirement to respond to the written opinion established for the searched invention.
Amended Rule 164 EPC will in general provide flexibility for applicants to decide freely on the subject matter to be pursued in a E-PCT application. In cases where the most important aspect of an application has not yet been searched, a further search will be possible, lessening the need to pursue that aspect through a divisional application. Accordingly, there is now less reason to pay further search fees in the International phase when the EPO is the ISA.
In any event, it should be remembered that amended Rule 164 EPC does not change the fact that it is possible to pursue only a single invention in a European patent application, regardless of whether other inventions have or have not been searched.
The application must ultimately meet the requirement of unity of invention even if additional search fees have been paid and a divisional application (or applications) could still be required to protect further inventions.
28 October 2014