European Patent Office Introduces Additional Searches (for a Fee) for European Patent Applications Originating Out of PCT Applications

As of 1^st November 2014, a modification of Rule 164 of the European Patent Convention (EPC) will come into force. Rule 164 EPC relates to the manner in which the European Patent Office (EPO) deals with certain aspects of international (PCT) applications entering into European (EP) regional phase. Under the new Rule, applications will have the new option of paying additional search fee at an early stage of the EP regional phase, if need be. 

Patent applications often include claims that are regarded by patent offices, such as the EPO, as being directed to more than one invention. In such a case, examination will be conducted on claims considered to relate to one “invention”. In the case of PCT applications, once the International Searching Authority (ISA) finds that the claims in an application relate to more than one “invention”, the prior art search will be conducted only for the first invention with applicant having the option of paying additional search fees to expand the search to the other “inventions”, although applicants mostly do not resort to this option. Rule 164 EPC is the rule governing, inter alia, the manner in which the EPO considers unity of invention of European applications based on a PCT application.

In essence, the new Rule 164 EPC, which will come into effect on 1st November 2014, presents a new possibility of paying additional search fees after entry into EP regional phase. This will afford more flexibility as to the subject matter of EP regional phase applications that is searched and subsequently examined by the EPO.

Current situation (under existing Rule 164)

Under the existing regime, stipulated under current Rule 164 EPC, no search or examination will be conducted by the EPO on (i) additional “inventions” identified by the EPO in European applications, based on a PCT application, that did not use the EPO as the ISA; and (ii) subject matter not searched by the EPO during the international phase, in applications that used the EPO as the ISA.

The only option available to applicant then is to file a divisional application including claims for the non-searched “inventions”, which is a costly undertaking. The current regime may be particularly frustrating when the subject matter of interest to applicant has changed during the international phase or when the EPO surprisingly raises a unity objection upon entry into the EP regional phase.

New situation (under new Rule 164)

The new Rule 164 EPC will provide new opportunities of avoiding the costs of filing a divisional application, if applicant wants to cover an unsearched invention, or otherwise prosecute unsearched subject matter within the same application.

More particularly, under the new regime, opportunities for additional searches will be provided, in the event that the EPO considers the application to include more than one invention or to relate to subject matter not covered by the international search. For applications where the EPO did not act as the ISA, the EPO will issue a partial supplementary search report on the first mentioned invention in the claims; and will provide the opportunity to pay additional search fees for obtaining a search report on the additional invention(s). For applications where the EPO acted as the ISA, the EPO will enable payment of additional search fees for obtaining a search report on the unsearched subject matter. Applicant will then be able to continue with the prosecution, based on the results of the additional search.

Time frame

The new Rule 164 will apply to all applications for which no Supplementary Search Report has been drawn up by November 1, 2014 (where the EPO was not used as ISA) or for which no Communication according to Article 94(3) EPC has been issued by that date (where the EPO was used as ISA).

It may be to applicants’ advantage to benefit from the new Rule 164 EPC. Therefore, applicants may consider taking action to delay prosecution, so as to ensure that the EPO will apply the new rules. By way of example, for applications for new entry into EP regional phase expected to benefit from the new rules, one may choose not to waive the right to receive a Communication under Rule 161 EPC, or not to request accelerated examination so as not to advance examination.