A recent change in European Patent Office (EPO) practice is a further, welcome example of applicant-friendly procedures being implemented by the EPO in relation to findings of lack of unity.
Previously, when the EPO made a finding of lack of unity at the search stage, applicants received a Partial Search Report under Rule 64 or Rule 164 EPC which included an invitation to pay one or more search fees in order to have any other invention(s) identified by the EPO searched, as well as the partial search results. The EPO then carried out an additional search in relation to those inventions for which a search fee was paid, and issued an Extended European Search Report including a search opinion on patentability in respect of each of the searched inventions.
However, as from 1 April 2017, the EPO now provides applicants with a provisional opinion on the patentability of the invention (or unitary group of inventions) first appearing in the claims together with the Partial Search Report – see notice in the Official Journal of the EPO here.
This subtle procedural change will afford the applicant the advantage of having the EPO’s opinion on the patentability of the first appearing invention before having to make a decision on whether to pay one or more additional search fees (currently €1,300.00 per search/invention). Therefore, for example, an applicant may decide to pay a further search fee for a second invention if it appears unlikely that a patent application directed to the searched first invention will proceed to grant, thus saving on costs for a divisional application to the second invention that may be filed at a later stage.
The new procedure applies to directly filed European applications, and to international (PCT) applications in respect of which an international search has been carried out by the EPO as the International Search Authority (ISA), as well as international (PCT) applications which have entered the European phase and in respect of which the EPO carries out a supplementary search.
Although a patentability opinion is provided with the Partial Search Report under this new practice, no substantive response addressing the points raised in the provisional opinion is required from the applicant. In this regard, the only response to the Partial Search Report which is required is the payment of additional search fees, if desired. Thus, as is currently the case, only the Extended European Search Report requires a substantive response.
The present change in practice follows the EPO’s earlier applicant-friendly procedural change regarding findings of lack of unity which sees the EPO allow the payment of further search fees for unsearched inventions following entry of international applications into the European phase, even when the EPO has acted as ISA in the international phase – see here.