European law change provides greater flexibility for international applicants

01 October 2014

From 1 November 2014, the EPO will revise Rule 164 regarding supplementary search procedures for PCT applications entering the European Regional Phase. The amended rule will provide greater flexibility for applicants at this stage.

The EPO performs a supplementary European search on any PCT application entering the European Regional Phase for which it did not act as the International Searching Authority. Under the current rule, if the EPO does not consider the application to meet the requirements for unity of invention, a supplementary European search report is drawn up based only on the first invention mentioned in the claims and there is no further opportunity to have other inventions searched.

Similarly, where the EPO did act as the International Searching Authority such that the requirement for a supplementary European search is dispensed with, the applicant is again limited to the subject-matter searched during the International Phase.

Consequently, in either case, if the applicant wishes to pursue protection for any unsearched subject-matter, then this can only be achieved via a costly divisional application.

In contrast, with applications filed directly at the EPO, the applicant is invited to pay further search fees if the EPO does not consider the application to meet the requirements for unity of invention. Applicants seeking protection in Europe via a PCT application have therefore been at a significant disadvantage compared to those filing directly with the EPO. Such issues may have been particularly frustrating for applicants that receive unity objections only under European practice.

The amendments to Rule 164 EPC address this issue by providing an opportunity for the applicant to pay, within a period of two months, further search fees in respect of any unsearched inventions claimed upon entry into the European Regional Phase. This option is available regardless of whether the EPO acted as the International Searching Authority.

The applicant may select any invention searched by the EPO for further prosecution of the application. This therefore provides greater freedom for applicants to pursue alternative inventions on entry to the European Regional Phase.

The new rule also allows applicants to gain an insight into the patentability of a previously unsearched invention before committing to the expense of filing a divisional application.

The new rule will come into effect on 1 November 2014 and will apply to any application for which the supplementary European search report or, where this is dispensed with, the first examination report has not yet been drawn up. Full details of the amendments to the Implementing Regulations can be found here.

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