Amended Rule 164 EPC regarding the possibility to pay additional Search Fees during the European Regional Phase
1. Since November 1, 2014, the EPO applies an amended Rule 164 EPC regarding the treatment of a lack of unity of invention objection in the European Phase of a PCT application.
Amended Rule 164 EPC distinguishes between two situations:
a) the EPO did not act as International Search Administration (ISA) or Supplementary International Search Administration (SISA)(Rule 164(1) EPC) ; and
b) the EPO acted as International Search Administration (ISA) or Supplementary International Search Administration (SISA)(Rule 164(2) EPC).
We will briefly summarize the new rules applying in each of these two situations below.
a) Situation in which the EPO did not act as International Search Administration (ISA) or Supplementary International Search Administration (SISA)
According to amended Rule 164(1) EPC, if the Examiner considers that the claims which are to serve as the basis for the supplementary Search Report do not comply with the requirement of unity of invention, he draws up a partial supplementary European Search Report for those parts of the application which relate to the invention first mentioned in the claims, and concomitantly sends to the Applicant an invitation to pay a further search fee for each supplementary invention, other than the one first mentioned in the claims. This partial supplementary Search Report will not be accompanied by a European Search Opinion.
The deadline for paying the additional search fee(s) is two months from the date of the invitation sent by the EPO, and the EPO has set the search fee for each additional invention to 1285 euro, which is the same amount as for the regular search fee.
The supplementary Search Report is then drawn up for the parts of the application relating to all the inventions for which search fees have been paid. This supplementary Search Report is accompanied by a European Search Opinion.
The Applicant is entitled to choose the invention which will be examined during the grant procedure among all the inventions searched by the EPO in response to the supplementary Search Report.
Divisional applications will have to be filed for all the other inventions which are to be prosecuted by the EPO. However, a reimbursement of the search fee under Article 9(2) RFees is possible for any divisional patent application relating to an invention for which the search fees have already been paid previously.
b) Situation in which the EPO acted as International Search Administration (ISA) or Supplementary International Search Administration (SISA)
In this case, the supplementary Search Report is dispensed with and the patent application is directly prosecuted by the Examining Division.
According to amended Rule 164(2), if the Examining Division considers that an invention is claimed in the European Patent Application which was not searched in the International Search Report, the Examining Division invites the Applicant to pay corresponding additional search fees within a period of two months from the invitation.
If additional search fees are paid, the results of the additional search will be communicated to the Applicant in an annex to a communication according to Article 94(3) EPC or Rule 71(3) EPC, and any objections against the additionally searched inventions will be set out in the communication according to Article 94(3). This communication also invites the Applicant to choose the invention which should be prosecuted by the EPO among the inventions searched.
It should be noted that, according to the Guidelines for Examination in the European Patent Office, Rule 164(2) also applies to a case where the claims were amended, upon entry into regional European phase or in response to the Communication according to Rule 161(1), to cover an invention which is no longer considered to be unitary with the invention searched by the EPO acting as ISA or SISA.
2. The amendment of Rule 164 EPC unifies the rules regarding unity of invention for Euro-PCT applications and direct European filings (Rule 64 EPC), and provides much more flexibility for the applicants of Euro-PCT applications than the previous Rule 164 EPC.
Indeed, previously, for a Euro-PCT application, if the EPO raised a lack of unity of invention objection during the European Regional Phase, the Applicant could only obtain a European Search Report and Written Opinion for the invention first mentioned in the claims, and had to file divisional applications for any other invention disclosed in the application, without any preliminary opinion on the patentability of these other inventions by the EPO.
The new version of Rule 164 EPC now allows the applicant to choose which invention should ultimately be covered by the European Patent Application, provided that the required additional search fees are paid, instead of being bound by the one mentioned first in the claims.
Moreover, the Applicant can now make an informed decision on the filing of divisional patent applications relating to the other inventions for which he paid an additional fee, since a Search Report and Written Opinion have been drawn up for these inventions.
3. Amended Rule 164(1) EPC applies to applications for which the European search report has not been drawn up by 31 October 2014. Amended Rule 164(2) EPC will apply to applications for which the first communication under Article 94(3) EPC and Rule 71(1) and (2) EPC or, as the case may be, Rule 71(3) EPC has not been drawn up by October 31, 2014.
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