Today, on 1 November 2014, the amended Rule 164 of the European Patent Convention (EPC) has come into force. As advised in our previous article, the EPO is introducing this applicant-friendly change which allows a search report to be drawn up on more than one invention of a European application arising from entry of a PCT application into the European Regional Phase (a so-called Euro-PCT application), where the EPO considers the application to lack unity.

Under the current version of Rule 164, the opportunities to have inventions searched on entry into the European phase for applications where the EPO was the International Searching Authority (ISA) when unity objections have resulted in restricted searches in the international phase are usually limited. The applicant is restricted to continuing with the first-mentioned invention in a non-unified case, even if the invention that is of most interest to the applicant is not the first-mentioned invention. The only option for an applicant to obtain protection for the invention(s) of interest in this case is to file one or more divisional applications. In contrast, if the application is a European Regional Phase where the ISA is not the EPO, the applicant is allowed to amend the claims on entry and the EPO will search the first invention mentioned in the amended claims. The EPO has consequently been a disadvantageous ISA to use.

The amended Rule 164 EPC redresses this imbalance. Rule 164(1) gives the search procedure for the former and Rule 164(2) for the latter. A summary of the new search procedures is given below. Further details can be found in OJ EPO 2013, 503 and OJ EPO 2014, A70.

Under Rule 164(1) EPC, which applies to European applications where the EPO was not the ISA, under the new procedure the search examiner must first determine whether the claims are unified. If the claims are found to be non-unified, the search examiner will issue a partial supplementary search report for the invention first mentioned in the claims. The applicant is sent the partial search report and invited to pay further search fee(s) for the additional invention(s) within two months. A search report and search opinion is then issued for each invention for which a search fee has been paid. The applicant is invited to choose one of the searched inventions to continue examination and restrict the claims accordingly. The excluded claims can be protected by means of one or more divisionals if desired.

Under Rule 164(2) EPC, which applies to European applications where the EPO was the ISA, when a supplementary European search is required – e.g. when the claims on file after voluntary amendment under Rule 161 EPC cover an invention that is different to that of the claims searched by the EPO as ISA – the EPO will continue to draw up a search report on those parts of the application first mentioned in the claims which the EPO considers to have unity of invention. However, applicants will henceforth also have the opportunity for the supplementary search report to cover one or more additional inventions, provided the requisite number of further search fees are paid within two months. If no supplementary search report is to be drawn up, but the Examining Division considers the claims that are examined lack unity of invention, it will offer applicants the opportunity for one more additional search to be conducted, again provided the requisite number of further search fees are paid within two months. The applicant will thereafter be offered the opportunity to pursue a single invention or group of unified inventions of its choice covered by the searches after it receives the first communication from the Examining Division.