The Administrative Council of the European Patent Office (EPO) has decided to amend Rule 164 EPC, thereby lifting the bar on having additional searches carried out in the European regional phase when the EPO considers the application to lack unity of invention.
European regional phase applications are subject to a supplementary European search if the EPO was not the International Searching Authority (ISA). Under current rules, in cases where the EPO finds a lack of unity when performing the supplementary European search, it will search only the invention that appears first, and the applicant is not provided with an opportunity to pay additional search fees to have the unsearched inventions searched. Applicants can only pursue the unsearched inventions in the European regional phase via one or more divisional applications.
If the EPO was the ISA, European regional phase applications are not subject to a supplementary European search. Under current rules, if the EPO as ISA finds a lack of unity while performing the international search, the EPO will search only the first invention and invite the applicant to pay additional search fees in the international phase to have the unsearched inventions searched. If the opportunity to pay additional search fees is not taken in the international phase, applicants can only pursue unsearched inventions in the European regional phase via one or more divisional applications.
The upshot of the changes to Rule 164 EPC is that applicants will be provided with a new opportunity to have claims searched in the European regional phase which have not yet been searched by the EPO (in either the international search report or supplementary European search report as the case may be) on account of a lack of unity. As claims must be searched by the EPO before they can form the subject of European examination, this rule change provides applicants with an opportunity to pursue any one of the inventions claimed in the European regional phase without having to file a divisional application.
Specifically, Rule 164 EPC as amended provides that the Examining Division will inform the applicant during the European regional phase that a search will be performed in respect of any unsearched invention for which a search fee is paid within a period of two months, and issue the results of any such search together with its next communication (which will either be an examination report or a notice of allowance).
The amended Rule 164 EPC is scheduled to come into force on 1 November 2014, and will apply to applications entering the European regional phase after that date and to existing European regional phase applications provided that, if the EPO was ISA, the first communication from the Examining Division (i.e. an examination report or a notice of allowance) has not been drawn up by that date, or if the EPO was not ISA, the supplementary European Search Report has not been drawn up by that date.