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Another welcome change to EPO rules - albeit not until November 2014

The EPO recently announced a very welcome change to its rules governing the filing of divisional patent applications. That change will take effect on 1 April 2014.

Another change, agreed at the same meeting of the EPO’s Administrative Council, addresses a further issue that has caused considerable inconvenience and expense to applicants in recent years. This concerns the EPO’s current inflexible approach to European patent applications derived from International (PCT) applications for which the EPO examiner decides that the claims cover more than one invention (referred to as “lack of unity”).

For all PCT applications that progress from the international phase to the EPO regional phase, where the EPO did not carry out the International search, a further search is performed by an EPO examiner (the “supplementary European search”). Under current rules, if the examiner decides that the claims of the application relate to more than one invention, he simply searches the first of those inventions. The applicant is given no opportunity to choose which invention is to be searched or to pay additional fees to have other inventions searched. The application must then be restricted to the first invention and the only way to pursue any of the other inventions is to file one or more divisional applications, which are expensive.

This is in contrast to the rules governing direct (non-PCT) European patent applications, for which the applicant is given the option of paying additional search fees, and can then choose which of the searched inventions is to be pursued in the application.

This difference in practice between PCT-derived and direct European patent applications was widely seen as unfair and illogical. The news that the EPO is to amend its rules to eliminate that difference is therefore to be welcomed. Under the new version of Rule 164, if a supplementary search results in a finding of lack of unity, the applicant will be given the option of paying additional search fees and then choosing which of the searched inventions is to be examined. Also, where the EPO did carry out the International Search and so no supplementary European search would normally be performed, if the applicant wishes to pursue claims that relate to an invention that was not searched in the International phase, it will be able to pay a search fee for that invention.

This change of practice will make the European stage of a PCT application much more user-friendly. Unfortunately, however, this new rule will not come into force until 1 November 2014 and it will therefore be some time before applicants benefit from it.The new rule will apply to all applications for which the supplementary search report (or, for cases on which the EPO carried out the International search and so no supplementary search is to be performed, the first examination report) has not been drawn up by that date.

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