European Union: EPO Will Allow Payment Of Additional Search Fees For European Regional Phase Applications

Following the recent return to the former practice of filing divisional applications in Europe, another applicant-friendly amendment to the European Patent Convention ("EPC") regulations was made official on October 24, when the European Patent Office ("EPO") published on its website its Decision to amend Rule 164 EPC regarding the searching of European regional phase ("Euro-PCT") applications in view of a lack of unity finding. The new rules aim to establish equal treatment for direct European applications and Euro-PCT applications, irrespective of whether the EPO or any other authority acted as International Searching Authority ("ISA") or Supplementary International Searching Authority ("SISA"), by providing the Euro-PCT applicants with an opportunity to request additional patent searches in the European phase.

Rule 164 EPC: Background and At Present

The procedure followed by the EPO for a Patent Cooperation Treaty ("PCT") application that has entered the European regional phase depends on whether or not the EPO acted as ISA or SISA. If an authority other than the EPO conducts a search in the international phase, the EPO carries out a supplementary search upon entry into the European regional phase. In the event of non-unity, a partial search report is drawn up only for the first invention mentioned in the claims; there is no possibility of having any other invention searched and examined in the application. The only option for pursuing an invention other than the first one mentioned is by filing a divisional application.

The EPO's approach to non-unity is different from that of other ISAs, in particular the United States Patent and Trademark Office ("USPTO"), which made non-unity findings by the USPTO frequently meaningless for the European proceedings. More often than not, the EPO would establish non-unity, where none was found in the international search report ("ISR"), or would split the subject matter differently. When sensing non-unity, applicants could amend the claims upon entering the European phase by placing the most important invention up front in the claims. However, the applicant could only guess as to the EPO's approach to splitting the subject matter into individual inventions, and if the guess happened to be wrong, the value of the application would decrease and additional costs for one or more divisional filing would be incurred.

Where the EPO acted as ISA or SISA, the "European" non-unity has been already established in the ISR, and applicants are given an opportunity to have further inventions searched in the international phase. Upon entry into the European phase, the EPO does not perform a supplementary search, and the applicants have to choose one of the already searched inventions for examination. Given the general tendency to defer any application-relevant decision—including fee payment, substantial argumentation, and claim amendments—until entry into national or regional phases, the invitation to pay additional search fees at the international phase is usually left unattended.

In neither of the above two scenarios do Euro-PCT applicants have a possibility of having additional inventions—other than the first one or one already searched in the international phase—searched at the European phase. The situation for those applications for which the ISA was not the EPO is worsened by the unpredictability of the EPO's position on unity until after a supplementary search has been conducted and the final split into individual inventions has been made. This situation is in contrast to the possibility of having more than one invention searched in direct EP applications (Rule 64 EPC).

In view of the comments from users and interested parties who felt an unbalanced treatment between Euro-PCT and Euro-direct applications, the EPO undertook an open consultation on the Rule 164 EPC provision. The announced amendment to Rule 164 EPC is the result of the analysis of the consultation inputs.

Rule 164 EPC as Amended

The Administrative Council of the EPO, in its October 16 decision, adopted a proposal by the President of the European Patent Office to amend Rule 164 EPC to enable applicants to request additional searches in the European regional phase. According to the amended text of Rule 164 EPC as published with the Decision, if the EPO considers that the subject matter of the claims that are to serve as the basis of a European regional phase application contains more than one invention, the EPO will provide the applicant with a two-months time period to pay additional search fees and have further inventions searched, regardless of whether the EPO was the ISA/SISA or not. The new rule thus parallels Rule 64 EPC applicable to Euro-direct applications.

The procedure followed by the EPO in the regional phase for the two categories of Euro-PCT applications will in essence be the same. In applications with a supplementary search report (i.e., EPO ≠ ISA), the first invention will be searched and the applicant will be invited to pay additional search fees for additional inventions.

In applications without a supplementary search (i.e., EPO = ISA), it is the Examining Division and not the Searching Division that will invite the applicant to pay additional search fees. Further, the Examining Division will also be able to raise objections under Rule 62a EPC (plurality of independent claims in one category) and under Rule 63 EPC (incomplete search), normally a prerogative of the Searching Division.

Additional search fees will be refunded if the applicant requests a refund and if the Examining Division finds that the lack of unity objection raised in the European phase was not justified.

This new Rule 164 EPC will enter into force on November 1, 2014. For applications with ISA other than the EPO, the new rule will apply to applications where the supplementary European search report has not been drawn up by November 1, 2014. For applications with the EPO as ISA, the new rule will apply to applications where the first office action on the merits (including Notice of Allowance under Rule 71(3) EPC) has not been drawn up by November 1, 2014.

This amendment to Rule 164 EPC is most welcome by the applicants because it will allow greater flexibility regarding international and European patent strategies. In particular, applicants will always be able to decide what subject matter to pursue in a Euro-PCT application.

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