Somewhat lost alongside the exciting announcement that the EPO is going to scrap the controversial 2 year divisional deadline rule was another recent decision of the Administrative Council.

Readers of the consultation section on the EPO website will have been aware that there was a consultation earlier in the year relating to Rule 164 and in a decision dated 16 October 2013 the Administrative Council duly announced a change to Rule 164 (which is reproduced in full at the bottom of the post). The amended Rule 164 is scheduled to enter into force on 1 November 2014 for any application for which the supplementary European search report under Article 153(7) EPC has not been drawn up as of 1 November 2014 or the first communication under Article 94(3) EPC and Rule 71(1) and (2) EPC or, as the case may be, Rule 71(3) EPC has not been drawn up as of 1 November 2014.

Current Rule 164 means that applicants entering the regional phase for cases where the EPO was the international searching authority can only pursue the subject matter that was searched in the international phase. Where the EPO was not the ISA then only the first invention mentioned in the claims is searched in the supplementary search report (somewhat harsh if the actual ISA in question did not raise any unity objections as it means that the Applicant can get caught out if the EPO find differently).

The new Rule 164 provides the following:

• where the EPO was not the ISA, Applicants will get a two month period to pay additional search fees if the EPO thinks the claims lack unity. The supplementary search will then cover all the searched inventions;
• where the EPO was the ISA the Applicant will still be given a two month period to pay additional search fees. However, the results of the search will either be included with the first exam report or a Rule 71(3) EPC communication. The Applicant will then be invited to restrict the application to one invention.

Any additional search fees that have been paid may be refunded if the applicant requests a refund and the Examining Division finds that one of the above communications was unjustified.

The new Rule 164 should therefore improve the choices available to applicants when entering the regional phase.

IPcopy notes that the changes to Rule 164 and Rule 36 essentially bring EPO procedures for Euro-PCTs and divisionals back to a position similar to the one we had before 2010, making 16th October 2013 something of  a “U-turn” day for the EPO.

Mark Richardson 11 November 2013

The EPC Rules will be amended as noted below:

1. Rule 164 shall read as follows:

“Rule 164

Unity of invention and further searches

(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; and

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

(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 capacity as International Searching Authority or Authority specified for supplementary international search, the Examining Division 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 Article 94, paragraph 3, and Rule 71, paragraphs 1 and 2, in which it shall give the applicant the opportunity to comment on these results and to amend the description, claims and drawings, or

– a communication under Rule 71, paragraph 3,

and

(c) where appropriate, in the communication issued under paragraph (b), invite the applicant 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 by the European Patent Office in its capacity either as International Searching Authority or as Authority specified for supplementary international search, or for which a search was performed in accordance with the procedure under paragraph (a).

(3) In the procedure under paragraph 2(a), Rules 62a and 63 shall apply mutatis mutandis.

(4) Rule 62 and Rule 70, paragraph 2, shall not apply to the results of any search performed in accordance with paragraph 2.

(5) Any fee paid under paragraphs 1 or 2 shall be refunded if the applicant requests a refund and the Examining Division finds that the communication under paragraphs 1(b) or 2(a) was not justified.”

2. Rule 135(2) shall read as follows:

“(2) Further processing shall be ruled out in respect of the periods referred to in Article 121, paragraph 4, and of the periods under Rule 6, paragraph 1, Rule 16, paragraph 1(a), Rule 31, paragraph 2, Rule 36, paragraph 2, Rule 40, paragraph 3, Rule 51, paragraphs 2 to 5, Rule 52, paragraphs 2 and 3, Rules 55, 56, 58, 59, 62a, 63, 64, Rule 112, paragraph 2, and Rule 164, paragraphs 1 and 2.”