The Administrative Council of the European Patent Office (EPO) has removed the obstacle to performing further searches for applications in the European regional phase (Euro-PCT applications) where an objection is raised on grounds of lack of unity of invention.
Under the current wording of Rules 164 and 135 of the Implementing Regulations to the EPC, where an application in the European regional phase is deemed not to comply with the unity of invention requirement, the EPO may only conduct a search on the invention appearing first in the claim set; no additional searches may be performed for any other inventions in the set. Since patent applications may not contain subject matter that has not undergone a search, up to now the only option for applicants interested in claiming such unsearched subject matter has been to file divisional applications, with the additional cost this entails. The costs attaching to filing a divisional application include paying anew all the official fees already paid previously for the parent application, including all the cumulative annuities, which can sometimes be considerable.
Rule 164 EPC is to be amended to allow additional searches where the EPO raises objections against the unity of invention of regional phase applications. The EPO will conduct a search on the first invention appearing in the claim set and will invite the applicant to pay further search fees for any other unsearched inventions within a two-month time limit.
The amended wording of these Rules will take effect on 1 November 2014.
Author: Ruth Sánchez
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