The European Patent Office is proposing to amend the rules regarding searches for Euro-PCT applications. The aim of the proposed changes is to make the Euro-PCT system fairer for  applicants of international applications who use the EPO as the International Searching Authority. A further aim is to bring Euro-PCT search practice into line with direct European practice.

Currently applicants entering the regional phase, for cases where the EPO is the international searching authority, can only pursue subject matter that was searched in the international phase.  Under the proposed rule change the applicant will be notified by the examining division of unsearched claims and given the opportunity of paying further search fees. The results of such a search will then be returned as an annex to a subsequent examination report.

Where the EPO is not the international searching authority the current practice is to draw up a supplementary search on the invention that appears first in the claim set. Under the proposed revision to the European Patent Convention, if the EPO considers there to be a lack of unity in an application, for which it was not responsible during the international phase, on entering the European regional phase, the applicant is to be given the opportunity to request, and pay for, searches on the additional inventions identified.

The proposal could be seen as the EPO backtracking on a change made under EPC 2000, which came into force on 13 December 2007, and which removed the opportunity to request further searches in the regional phase.

Consultation for this revision is open until 25 February 2013.

The proposed revision to Rule 164 states:

“(1) If the European Patent Office considers that the application documents which are to serve as the basis for the supplementary European search do not comply with the requirement of unity of invention, it shall:

(a) draw up a partial supplementary search report on those parts of the application which relate to the invention, or the group of inventions within the meaning of Article 82, first mentioned in the claims;

(b) inform the applicant that for the supplementary European search report to cover the other inventions, a further search fee must be paid in respect of each invention involved within a period of two months;

(c) draw up the supplementary European search report for the parts of the application relating to inventions in respect of which further search fees have been paid in accordance with paragraph (b).

(2) If the supplementary European search report is dispensed with and the examining division considers that in the application documents which are to serve as the basis for examination an invention, or a group of inventions within the meaning of Article 82, is claimed which was not searched by the European Patent Office in its function as International Searching Authority or Authority specified for supplementary international search, it shall:

(a) inform the applicant that a search will be performed in respect of any such invention for which a search fee is paid within a period of two months;

(b) issue the results of any search performed in accordance with paragraph (a) together with a communication under Rule 71(1) or (3) in which the applicant is given the opportunity to comment on these results and to amend the description, claims and drawings; and

(c) in which the applicant is invited to limit the application to one invention, or group of inventions within the meaning of Article 82, for which a search report was drawn up either by the  EPO in its function as International Searching Authority or Authority specified for supplementary international search or for which a search was performed in accordance with the procedure under paragraphs (a) and (b).”

Source: http://www.epo.org/law-practice/consultation/ongoing/revision.html

Update: Upon further reading of the proposed changes to Rule 164, we note that the structure of Rule 164(2)c does not appear to form a coherent sentence when taken in context. Specifically, Rule 164(2) states “…[the EPO] shall: (a) inform…; (b) issue…; and (c) in which the applicant is invited (sic)…”. We believe the intended phrasing of part (c) should be along the lines of “(c) invite the applicant to…”. We have contacted the EPO to raise this issue.

Update 2 (11/11/13): The EPO have now amended Rule 164 that will come into force 1 November 2014, read IPcopy’s take on it here.

Laurence Lai    5 February 2013