The European Patent Office (EPO) has given notice of a welcome change to a small point of practice, which has sometimes been troublesome in the past.
Many European patent applications are based upon International patent applications that are searched outside the EPO, for example at the Japanese Patent Office (JPO) or the United States Patent and Trademark Office (USPTO). When a European patent application is filed based on an International application in this way, the EPO supplements the search carried out in the International phase with its own.
At this point, it sometimes occurs that the European examiner considers that the European patent application relates to more than one invention.
Under current practice, an examiner simply searches the first invention and issues a search report which is based on that invention. The applicant is not given any opportunity to pay additional search fees so that other claims can be searched. In practice, the applicant is presented with a fait accompli – only one invention has been searched and any other can normally only be pursued independently by filing a divisional application, which can be very expensive.
This practice has been reviewed by the EPO and the relevant rule (Rule 164) is now going to be changed.
Under the revised rule, if an examiner conducting a supplementary search (as explained above), considers that the claims relate to more than one invention, the examiner will draw up a partial supplementary search report covering the first invention, but the examiner must also give the applicant an opportunity to pay further search fees in respect of any other inventions identified. A two month period will be given.
This will give applicants in these circumstances the opportunity to obtain a search on claims which are considered to relate to different inventions.
The opportunity to pay additional search fees is particularly important in European practice, where examiners do not permit amendments to be made based on claims that have not been searched.
The changes will come into effect on 1 November 2014 and will affect any European patent application on which a supplementary European search report is required but has not been drawn up by that date.
Corresponding provisions will allow further search fees to be paid during the examination procedure if no supplementary European search has been carried out.