European Patent Applications – R164 changes allow additional searches for cases lacking unity

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The European Patent Office, EPO, has announced that as of 1 November 2014, it is relaxing rule R164 EPC on how lack of unity is dealt with.  Currently, on European applications that are filed from an International application (PCT), it is not possible to have further inventions searched if claims are found to be directed to more than one invention.  The only "fix" for this was to file a divisional application and as a result end up with two or more applications, even if only the later unsearched claims were wanted.  Following the changes to R164 EPC details linked here, it will be possible in all cases to pay an additional search fee to have further inventions searched.

This is a welcome change to practice before the EPO. It is not uncommon for new prior art to be found by an EPO Examiner at the search stage that results in a lack of unity objection arising.  In such situations, not all claims may be searched and this can have complications during examination.  Under current practice, applicants face the tough choice of sticking with the claims the Examiner has searched, or paying the high costs associated with a divisional application. Under the new rules, this situation can be avoided.

Jonathan is a British and European Patent Attorney. He studied Cybernetics with Computer Science at Reading University. He is also a Chartered IT Professional and is a member of the BCS, the Chartered Institute for IT. He is active in promoting IP awareness in IT companies and spends much of his time dealing with both IP for IT and technical IT issues.