Another EPO Rule U-turn

Currently, if a PCT application is found to contain more than one invention, then the applicant has an opportunity to pay additional search fees in the international phase, but not on European regional entry at the EPO. In cases where the EPO was the International Search Authority (ISA), the EPO will not prepare a supplementary search report, and the applicant will only be able to pursue subject matter that was searched in the international search report, with no further opportunity for the applicant to pay for additional searching. In cases where the EPO was not the ISA, the EPO will prepare a supplementary search report on the basis of the first mentioned invention in the claims, and again the EPO will not provide an opportunity for the applicant to pay for additional searching.

Therefore, under the current regime, the options available to applicants if the EPO considers the claims of a European regional phase entry application to contain more than one invention are limited. This can be particularly frustrating for an applicant if the most important claims of the European regional phase application are considered by the EPO to correspond to a second or subsequent invention. In such a case, the EPO would search the claims of the first (less preferred) invention, and the applicant would be required to file a divisional application to pursue the more important claims of the second or subsequent invention.

The new rule change removes this problem. The EPO has announced that Rule 164 EPC will be amended to enable applicants to request additional searches in the European regional phase. Following this change, if the EPO considers the claims of a European regional phase application to contain more than one invention then, regardless of whether the EPO was the ISA or not, the EPO will provide the applicant with a 2-month window to pay additional search fees.

This new rule will come into force on 1 November 2014. For cases where the EPO was the ISA, the new rule will apply for all cases where an EPO examination communication has not already been issued by 1 November 2014. For cases where the EPO was not the ISA, the new rule will apply where the supplementary European search report is drawn up on or after 1 November 2014.

As a result of this change, applicants will have greater flexibility regarding what subject matter of European regional phase entry applications is searched (and subsequently examined) by the EPO. While this is a relatively small change in European practice it shows that the EPO is listening to the concerns of applicants, which we wholeheartedly support.