An updated Rule 164(2) EPC has come into effect, allowing further searches in the European Regional Phase of a PCT application for which the EPO was the International Searching Authority. This change has been welcomed, as it finally places PCT applicants on the same level as direct EPO applicants with regard to which inventions can be searched. Previously, no chance was available for a further search in the European Regional Phase. Since unsearched subject matter may not be prosecuted in a European patent application, applicants were in some cases forced to file divisional applications to their desired subject matter at great expense.
The procedure is as follows:
The Examining Division will assess the application documents at the end of the 6-month time limit set in the Communication under Rules 161(1) and 162 EPC to see whether there are any claimed group of inventions which were not searched in the International Phase. If so, the Examining Division will issue a communication with a 2–month time limit to pay further search fees. The results of the further search will be issued with the first Communication under Article 94(3) EPC or Rule 71(3) EPC.
At current rates, a European search fee is 1285€ (compared to 1875€ for an International search fee). It might therefore appear more cost effective to use the new Rule 164(2) procedure, but bear in mind that the earlier you develop a complete picture of the state of the art, the more streamlined will be the procedure later in all the national offices. The new procedure is particularly useful if the applicant makes use of Chapter II international preliminary examination but reaches the end of the road with one invention in the International phase and decides to try a different tack in the European phase.