Good news for European patent applicants! On November 1, 2014, amended Rule 164 of the European Patent Convention (EPC), which was previously analyzed by Global IP Matters, finally went into effect. Rule 164 as amended offers applicants more flexibility because the European Patent Office (EPO) will now search multiple inventions regardless of the International Searching Authority (ISA) chosen for a Patent Cooperation Treaty (PCT) application having entered the regional phase in Europe. A brief overview of the practical effects of new Rule 164 follows.
Under old Rule 164, when the EPO was not the ISA for a PCT application having entered the European national phase, the EPO would only search the first invention in the claims. This practice would typically result in only claim 1 (and any claims united therewith) being examined in Europe, with any additional inventions identified by the EPO requiring pursuit in one or more divisional applications. When the EPO was the ISA for the PCT application, no search would be conducted by the EPO during the European regional phase, thereby limiting applicants to the invention previously searched by the EPO. Applicants were thus required to file divisional application(s) to pursue any inventions lacking unity with the searched invention.
Under new Rule 164, when the EPO is not the ISA for the PCT application and a unity of invention issue is identified, the EPO will issue a partial supplementary European search report based on the first invention in the claims. Applicants will be given two months from the issuance of the partial supplementary European search report to pay a fee to have additional claimed invention(s) searched. The supplementary search report will cover parts of the application relating to inventions for which search fees have been paid. When the EPO is the ISA for the PCT application, applicants will be invited to pay search fees for any claimed inventions not searched by the EPO in the international phase. The results of the search(es) will accompany the first communication from the EPO’s Examining Division, which is usually the first examination report. Regardless of whether or not the EPO is the ISA, if the fee is paid, a supplementary European search report is issued covering all paid-for inventions. Applicants can then select any one of the searched inventions to pursue in the European application.
Accordingly, under new Rule 164, rather than being required to file divisional application(s) because of a unity of invention issue, applicants are offered the opportunity (with an increased fee, of course) to pursue any one of multiple inventions.