Following a recent decision of the Administrative Council of the EPO, there will be changes to the implementing regulations (rules) in relation to international applications (PCT) entering the European regional phase. Under the new rules, which will come into force on 1 November 2014, the applicant will be able to pay additional search fees for unsearched subject matter after entry into the European regional phase. This means that the applicant will no longer be required to file one or more divisional applications to pursue unsearched subject matter.
Rule 164 EPC concerns PCT applications entering the European regional phase that are judged to cover more than one invention (“non-unitary” applications). At present, Rule 164 does not provide any mechanism for the applicant to pay additional search fees after the PCT application has entered the European regional phase.
The PCT rules provide that if a non-unity objection is raised, only the first identified invention is searched and the applicant is invited to pay additional search fee(s) for any of the unsearched claims. Under the current Rule 164, if no additional search fee is paid during the international phase where the EPO is the International Searching Authority (ISA), only the claims searched in the ISR are examined in the European regional phase. Thus, if no additional search fee was paid in the international phase, the applicant is restricted to the claims covered in the ISR. Amendment to cover subject-matter not searched in the ISR is not possible unless the applicant files a divisional application.
If the EPO is not the ISA, the EPO performs a supplementary search on claims directed to the first identified invention only. In this case, although it may be possible to re-order the claims on entry into the European regional phase so that the supplementary search is performed on claims different to those searched in the ISR, further prosecution of the application is restricted to the claims searched in the supplementary search. Amendment to subject-matter not covered in the supplementary search is not possible, and the applicant must file a divisional application in order to pursue the subject-matter of any of the claims not covered by the supplementary search.
Moreover, where the EPO is not the ISA and a non-unity objection is raised in the supplementary search but not in the international phase, the applicant has no option to request an additional search. The applicant is forced to choose either to file a divisional application to pursue claims that are not covered in the supplementary search or to abandon the unsearched subject-matter.
In short, the current provision effectively forces the applicant to decide the direction in which to take the application at the very early stages of the international phase, before the application enters the European regional phase. It also penalises those who choose the EPO as the ISA, as the option of re-ordering the claims on entry would not be available in those cases.
Under the new provision, where the EPO is not the ISA, if it finds that the claims lack unity the EPO will issue a Partial Supplementary Search Report and invite the applicant to pay additional search fee(s) within a period of two months for any claims not covered in the Partial Supplementary Search Report.
Where the EPO is the ISA, the EPO will invite the applicant to pay additional search fee(s) within a period of two months for any claims not covered in the ISR. Although it is not clearly set out in the new provision, it is likely that this invitation will be issued after the so-called “Rule 161” period. It is expected that the EPO will publish guidelines as to the exact timing of this invitation after the changes take effect.
After receiving the invitation, the applicant will have the choice either to restrict the claims to those searched by the EPO (in the ISR or in the Partial Supplementary Search Report) or to pay additional search fee(s).
The changes will apply to:
- Applications filed after 1 November 2014;
- Pending applications for which the EPO is the ISA and where the first Examination Report has not been issued before 1 November 2014; and
- Pending applications for which the EPO was not the ISA and where the Supplementary European Search Report has not been issued before 1 November 2014.
These changes to the regulations will bring the Euro-PCT provisions closer to provisions for non-PCT European applications.
With the changes, the applicant will no longer be forced to file divisional applications in order to have non-unitary inventions searched in the European regional phase. The new provision therefore provides a more cost-effective way to assess the patentability of non-unitary applications by allowing the applicant to request further searches during the European regional phase.
Although this rule change does not take effect until 1 November 2014, in some cases it may need to be taken into account when making decisions before that date.
This may apply for example when deciding whether or not to pay additional search fees requested by the ISA in the international phase. Where the European regional phase entry deadline is on or after 1 November 2014, and possibly even if it is some months earlier, a decision as to whether to pay for an additional search may now be deferred until the application enters the European regional phase.
In addition, in some cases it may be desirable to take steps to delay prosecution of an application so that the new provisions are applied.
If you would like detailed advice on these issues or have any questions, please contact us.