Re-introduction of supplementary European searches for non-unity PCT applications during the European regional phase
As from November 1, 2014, European patent applications which originate from an international patent application (PCT) will again be subject to additional supplementary searches in the case of non-unity.
European patent applications which originate from an international patent application (PCT) will again be subject to additional supplementary searches.
Rule 164 EPC has been amended to allow applicants to request additional searches in the European regional phase.
In cases where the European Patent Office draws up a supplementary European search report, i.e. in those cases where the European Patent Office did not carry out the international search, the European search examiner evaluates the application with regard to unity of invention. If the European Patent Office finds that a European regional phase application lacks unity, the first invention will be searched and the applicant will be given a further opportunity to pay the search fee(s) for any further group(s) of inventions within a 2-month time limit. The European Patent Office will then establish the supplementary European search report for all claims for which search fees were paid. Thus, the applicant will again have the possibility of prosecuting any claimed invention in the European regional phase. The amended Rule will apply to applications for which the supplementary European search report is drawn up on or after November 1, 2014.
In cases where no supplementary European search report is drawn up, i.e. in cases where the European Patent Office prepared an International Search Report or a Supplementary International Search Report, the Examining Division will inform the applicant that an invention or a group of inventions was not searched during the international phase and that a European search will be carried out in respect of any such invention for which a search fee is paid within a period of two months. The search results will be delivered to the applicant either together with the first examination report or together with the Communication under Rule 71(3) EPC.This means that for cases where the European Patent Office acted as International Searching Authority, applicants will be able to pay additional search fees during the European regional phase even if they paid no extra search fees to the European Patent Office during the international phase. However, no European search opinion will be prepared for claims covered by an additional European search. This will apply to cases where no European examination report has been issued by November 1, 2014.