Lack of Unity - Further Searches before the EPO:

Restoration of equal treatment between Euro-PCT and EP-Direct applicants

            According to the current EPO rules regarding Euro-PCT applications for which the EPO has not acted as International Searching Authority (ISA) (Rule 164(1) EPC), if the Office considers that the application documents do not comply with the requirement of unity, it shall draw up a Supplementary European Search Report (SESR) only for the invention first mentioned in the claims. If the lack of unity is confirmed by the Examining Division, the only way to protect the other inventions in Europe is to file divisional applications.

            Similarly, when the EPO has acted as International Searching Authority (ISA) and the Examining Division finds that the application documents do not meet the requirements of unity, it shall invite the applicant (Rule 164(2) EPC) to limit the application to one invention covered by the International Search Report. Again, the protection of the other inventions is only possible through the filing of divisional applications.

            In those two situations, the Euro-PCT applicant is not given the opportunity to pay further search fees.

By comparison, for EP-Direct applicants, when the EPO considers that the application does not comply with the requirement of unity, it shall draw up a partial search report for the first invention mentioned in the claims and shall inform the applicant that further search fees may be paid for the other inventions (Rule 64 EPC). The EP-Direct applicant is then given the opportunity to choose among all searched inventions (those for which search fees have been paid) for further examination before the EPO.

            In order to restore equal treatment between Euro-PCT and EP-Direct applicants, the EPO has decided to change provisions of Rule 164 EPC, which shall enter into force on 1 November 2014. Those new provisions are summarized below.

            A- ISA was other than EPO

         If the EPO considers that the application documents which are to serve as the basis for the Supplementary European Search do not comply with the requirement of unity, it shall draw a Partial SESR only for the invention first mentioned in the claims. Also, the EPO shall inform the Euro-PCT applicant that further search fees may be paid for the other inventions mentioned in the claims, within a period of two months.

           Then, the EPO shall draw up the SESR for the inventions in respect of which search fees have been paid. Hence, the Euro-PCT applicant is given the opportunity to choose from amongst all the inventions covered by the SESR the one he wants to be further prosecuted before the EPO.

         These new provisions (new Rule 164(1) EPC) shall apply to any Euro-PCT application for which the SESR has not been drawn up by 1 November 2014.

            B- ISA was the EPO

            If the Examining Division considers that the application documents on which the European grant procedure is to be based covers inventions that have not been searched by the EPO acting as ISA, it shall inform the Euro-PCT applicant that further search fees may be paid for these non-searched inventions, within a period of two months.

            Then, the EPO shall issue the results of any search for which a further search fee has been paid, together with an Examining Division Communication under Article 94(3) EPC (or with a Communication of intention to grant under Rule 71(3) EPC). If the requirement of unity is not met, the Euro-PCT applicant would be given the opportunity to choose one invention amongst all the searched inventions for further examination before the EPO.

          These new provisions (new Rule 164(2) EPC) shall apply to any Euro-PCT application for which the first Communication under Article 94(3) EPC (or, as a case may be, under Rule 71(3) EPC), has not been drawn up by 1 November 2014.

             We welcome these changes as the applicants are now given more freedom to choose how to prosecute their Euro-PCT patent applications. With an early opportunity to gain insight into the patentability of several claimed inventions, they can decide how best to proceed, whether by way of a divisional application or by way of invention switching in the existing patent application.

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Brevalex, September 2014