Changes to rule 164 EPC: unity of invention and further searches

From 1 November 2014 the European Patent Office will change its practice and allow additional searches for European regional phase patent applications (Euro-PCT applications) that are found to lack unity of invention.

At present there is a discrepancy between direct filed European patent applications and European patent applications which are European regional phase applications derived from an International (PCT) filing, a so-called Euro-PCT.

Greater flexibility with respect to amending claims

For a direct filed European patent application if the search examiner finds that the claims define more than one invention, the applicant is provided with the opportunity to request additional searches for the unsearched subject matter.  If additional searches fees are made, the applicant can then pursue their application based on any of the searched inventions.  If they take this option they then also have a greater flexibility with respect to amending their claims; because the EPO does not allow amendment of the claims to include any unsearched subject matter. Also, they have the opportunity to file a respective divisional patent application for any of the other searched inventions with the benefit of the results of the search prior to incurring the cost of filing a divisional patent application.

This flexible approach is presently not the case for Euro-PCT patent applications because there is no opportunity during the European regional phase to request additional searches when a lack of unity is found.  For this type of application there is only an opportunity to request additional searches during the International phase.

Currently claims must be based on one of the searched inventions

Currently, when filing a Euro-PCT application for which the EPO was the International Search Authority (ISA) or International Examination Authority (IEA), the claims of the Euro-PCT must be based on one of the searched inventions.  For a Euro-PCT for which the EPO was not the ISA or IEA, for example the USA or Japan was the ISA or IEA, the claims can optionally be based on an unsearched invention; this is because a supplementary search is conducted by the EPO for this type of application.  This therefore leads to a further discrepancy and puts Euro-PCT applications for which the EPO was the ISA or IEA at an even further disadvantage.

In either case, for a Euro-PCT application, regardless of the ISA or IEA, it is presently not possible to pay additional search fees when a lack of unity is identified for the first time during the European regional phase.

Option of requesting additional searches from 1 November

However, the option of requesting additional searches will be available on or after 1 November 2014 for Euro-PCT patent applications as follows:

  1. Euro-PCT patent application where the supplementary search report issued indicating a lack of unity on or after 1 November 2014.  In this instance, a partial search report will issue first, providing a two month deadline for requesting the additional searches; and
  2. Euro-PCT patent applications where no supplementary search is necessary (because the EPO was the ISA or IEA) when the first examination report issues indicating a lack of unity on or after 1 November 2014.

The above will be possible regardless of whether additional searches were requested during the International phase.

This will place all European patent applications, regardless of their filing origin, on a more even footing and allow the same flexibility of approach for a Euro-PCT application in the ongoing prosecution, which is presently available to direct filed European patent applications.

Contact our advisors today

If you have any questions regarding this rule change and what it means for you, please contact us and one of our patent attorneys will get back to you.

© 2018 Wilson Gunn