Changes to Rule 164 EPC – Good News for Applicants

A procedural Rule of the European Patent Office (EPO) that often puts patent applicants, particularly from outside Europe, at a costly disadvantage is due to be amended in November 2014. From 1 November 2014, applicants will be able to request additional searches to be carried out following a finding of non-unity by the EPO’s Search Division.

Current Rule 164 EPC

Currently, when an International (PCT) patent application, which has not been searched by the EPO as the International Searching Authority (ISA), enters the European Regional Phase, the EPO will draw up a supplementary search report. If the EPO considers that the claims relate to more than one invention, a supplementary search report will be only drawn up in relation to the first invention mentioned in the claims. Therefore, if the applicant desires patent protection for one or more of the further unsearched inventions defined in the claims, there is currently no opportunity to pay further search fees to have those respective claims searched.

For PCT applications for which the EPO was the ISA, there is currently no opportunity to request additional searches after entry into the European regional phase. The application is therefore restricted to claiming subject matter searched in the International phase.

As a result, in both instances, a divisional patent application must be filed to pursue patent protection for each of the unsearched inventions, which can be costly for the Applicant. Furthermore, the decision to file one or more divisional applications is made ‘blind’ without the benefit of the findings of a European supplementary search report or in some instances an International Search Report.

New Rule 164 EPC

Rule 164 EPC has been amended to allow applicants to elect to pay additional search fees to have one or more further inventions searched by the EPO, following a finding of non-unity by the Search Division. This rule change will allow applicants to decide whether to file one or more divisional applications to the further invention(s) with the benefit of the results of a search already available. Alternatively, the applicant may amend the claims of its existing patent application to switch to one of the searched later mentioned inventions, and so possibly avoiding the need for a divisional application.

For Euro-PCT application where the EPO was not the ISA, the further search fees must be paid within two months from the date of an official communication issued by the EPO raising a lack of unity objection. If further search fees are paid, the EPO will issue a further search report in respect of the further invention(s).

For Euro-PCT applications where the EPO was the ISA, applicants will be able to request additional searches even if they opted not to pay extra search fees during the international phase. New Rule 164(2) indicates that the EPO will set a deadline of two months in which to pay additional searches fees if unity is considered lacking in the claims on file at regional phase entry. However, if additional searches are carried out, the EPO will not prepare a full search report. Instead, the EPO will issue the additional search results together with a first examination report, or Rule 71(3) communication and invite the applicant to limit the claims to a single searched invention.

In practice, this is a welcome change as it provides the applicant with an early opportunity to gain an insight into the patentability of one or more further claimed inventions before deciding how best to proceed, whether that is by way of a divisional application or by way of invention switching in the existing patent application.

The change to Rule 164 EPC is due to come into force on 1 November 2014.

For cases where the EPO was not the ISA, the new Rule will apply where the supplementary European search report is drawn up on or after 1 November 2014.

The new Rule will apply to such cases where an Examination Report from the EPO has not been issued by 1 November 2014.

Further information and advice in respect of this matter can be obtained by contacting any of our attorneys or by emailing docketing@secerna.co.uk