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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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New Option to Pay Additional Search Fees at the European Patent Office

Rule 164 EPC came into force as of 1 November 2014, such that when an EPO search examiner carries out a supplementary search of a PCT application upon entry to the European regional phase and finds lack of unity of invention, the applicant will be invited to pay additional search fees, to have one or more of the remaining inventive concepts searched.

Rule 164 EPC came into force as of 1 November 2014, such that when an EPO search examiner carries out a supplementary search of a PCT application upon entry to the European regional phase and finds lack of unity of invention, the applicant will be invited to pay additional search fees, to have one or more of the remaining inventive concepts searched.

Prior to November 2014, it had been possible to pay more than one search fee for a patent application filed direct at the EPO or for a PCT application in its International phase, but upon entry to the European phase, it was not possible to pay additional search fees. Prior to amended Rule 164 EPC entering into force, the supplementary search carried out by the EPO (supplementing an International Search drawn up by another office such as the USPTO or the JPO) was drawn to the first invention set out in the claims. If the search examiner had formed the view that the claims covered a second invention, he stopped the search at that point and the only option for the subject matter of the second invention was the filing of a divisional application (with considerable additional associated costs). This put applicants who use the PCT route at a disadvantage vis-à-vis applicants who use the direct EPO route. 

Under the new system, if the EPO examiner finds a lack of unity when carrying out a supplementary search, the applicant can pay additional search fees and consider all the search results before deciding which claims should proceed to examination and whether to file a divisional application. 

We believe the same applies even where the EPO was the International Searching Authority and, in the case of International Examination, the applicant amends to unsearched subject matter. This is a point we are already putting to the test at the EPO

Prior to November 2014, it had been possible to pay more than one search fee for a patent application filed direct at the EPO or for a PCT application in its International phase, but upon entry to the European phase, it was not possible to pay additional search fees. Prior to amended Rule 164 EPC entering into force, the supplementary search carried out by the EPO (supplementing an International Search drawn up by another office such as the USPTO or the JPO) was drawn to the first invention set out in the claims. If the search examiner had formed the view that the claims covered a second invention, he stopped the search at that point and the only option for the subject matter of the second invention was the filing of a divisional application (with considerable additional associated costs). This put applicants who use the PCT route at a disadvantage vis-à-vis applicants who use the direct EPO route. 

Under the new system, if the EPO examiner finds a lack of unity when carrying out a supplementary search, the applicant can pay additional search fees and consider all the search results before deciding which claims should proceed to examination and whether to file a divisional application. 

We believe the same applies even where the EPO was the International Searching Authority and, in the case of International Examination, the applicant amends to unsearched subject matter. This is a point we are already putting to the test at the EPO.

Rule 164 EPC came into force as of 1 November 2014, such that when an EPO search examiner carries out a supplementary search of a PCT application upon entry to the European regional phase and finds lack of unity of invention, the applicant will be invited to pay additional search fees, to have one or more of the remaining inventive concepts searched.