On 1 April 2017 the EPO changed its practice slightly for patent applications containing more than one inventive concept (i.e. for applications that the EPO search division has decided lack unity).

Previously, in cases where the EPO thought there was a lack of unity, applicants would receive a communication under either Rule 64 or Rule 164 EPC enclosing a partial search report on the first claimed invention within the claim set and an invitation to pay one or more search fees (at 1300 Euros per additional search).

An extended European search report (EESR), including a written opinion, would then be issued on all the inventions for which a search fee had been paid.

From 1 April 2017 however the partial search report will also be accompanied by a provisional opinion on the patentability of the invention first mentioned in the claims. Applicants will therefore now be able to make their decision on whether to pay additional search fees while being in possession of the EPO’s opinion on the first claimed invention.

This new procedure will apply to directly filed European applications, EP regional phase applications for which a supplementary European search report is carried out under Rule 164(1) EPC and international applications for which the EPO is ISA.

The provisional opinion (which will be issued on new EPO Form 1707) will be for information only and a reply will not be required. Indeed, any such reply filed by an applicant will not be taken into account when the EESR is issued.

See the EPO Notice here.

Mark Richardson 25 April 2017