European Patent Applications - Changes to search procedure where there is a lack of unity take effect on 1 November 2014

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Summary

Does the EPO consider your ex-PCT application to cover more than one invention?  Has that additional invention not yet been searched? Up to now, if you have wanted that additional invention searched by the EPO, it has been necessary to file a divisional application.  From 1 November 2014, this will change – the EPO will (for a fee) search the additional invention without having to file a divisional application.  

The changes to the rule in question (Rule 164 EPC) are set out in the EPO's administrative council decision linked to here.

Practice tips

When filing a Euro-PCT application when the EPO was not the ISA, it is still important to think about the order of the claims in the EP application, as the EP supplementary search will be carried out on the first-mentioned invention.  However, under the new procedure, it will at least be possible to have additional inventions searched, if desired.

It is important to note that the EPO has not changed its practice on unity of invention.  Art. 82 (EPC) still states that “the 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”.  However, under the new procedure, it will at least be possible to get an idea of the prior art for an additional invention, without having to incur the cost of an EP divisional application.

New procedure as from 1 November 2014

This applies to:

- any Euro-PCT applications for which the ISA was not the EPO where the EPO has not as of 1 November 2014 drawn up an EP supplementary search; or

- any Euro-PCT applications for which the ISA was the EPO where the EPO Examining Division has not as of 1 November 2014 issued a first office action.

The new procedure is the same as the previous procedure (see below) for (1) and (2) but changes for (3):b2ap3_thumbnail_epo-r164-procedure.png

  1. If the International Searching Authority (ISA) was not the EPO, then after the Euro-PCT application is filed, the EPO will carry out a supplementary search on the invention or group of inventions first mentioned in the claims on filing the EP ex-PCT.
  2. If the ISA was the EPO, no supplementary search is carried out on filing the Euro-PCT.  Instead, the EPO relies on the International search.
  3. In the case of (1), if the EPO considers that the Euro-PCT application covers an additional invention lacking unity with the main invention, then it will issue a partial supplementary search in respect of the main invention only.  It will however then give the applicant a chance to have the additional invention searched, if the applicant pays a fee within 2 months (non-extendable).
  4. In the case of (2), if the EPO considers that the Euro-PCT application includes an additional invention lacking unity with the main invention, which additional invention was not searched by the ISA, then the EPO will now give the applicant a chance to have the additional invention searched, if the applicant pays a fee within 2 months (non-extendable).  The additional search will not however include a search opinion (quasi examination report).
  5. In either case, if the EPO considers that the inventions which have been searched lack unity, then it will ask the applicant to limit the application to a single invention (or group of inventions which are unified).  If however the applicant manages to persuade the EPO that its decision was wrong, then the EPO will refund the additional search fee.

 

Prior Procedure

Up to 1 November 2014: b2ap3_thumbnail_epo-r164-procedure-pre-1-november-2014.png

  1. If the International Searching Authority (ISA) was not the EPO, then after the Euro-PCT application is filed, the EPO will carry out a supplementary search on the invention first mentioned in the EP claims.
  2. If the ISA was the EPO, no supplementary search is carried out on filing the Euro-PCT.  Instead, the EPO relies on its own International search.
  3. In either case, if the PCT application includes an additional invention which is considered by the EPO to lack unity with the main invention, and if this additional invention has not been searched by the ISA or in the EPO supplementary search, then the only way to have this additional invention searched by the EPO is by filing an EP divisional application.
  4. The EPO will not examine a Euro-PCT application if it has not itself performed a search in respect of the invention for which protection is sought.  In other words, the invention must either have been searched in the EPO’s supplementary search or by the EPO acting as ISA.