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EPO allows searches for more than one invention in Euro-PCT applications
The EPO’s rules on searching more than one invention in Euro-PCT applications (i.e. European regional phases of PCT applications) were amended on 1 November 2014. Under the new regime, it is now possible to have more than one invention searched in such applications by paying additional search fees, in the same way as for direct European patent applications.
The additional search fee is the same as the standard European search fee, which currently stands at €1285.
Updated Rule 164 EPC allows additional searches to be requested both for Euro-PCT applications that were searched by the EPO in the international phase and for applications that were searched by another patent office at that stage. The procedure in these two cases is outlined below.
International search performed by the EPO
In this case, normally no search is performed by the EPO in the European regional phase. However, if the examining division handling the application decides that the claims include one or more inventions that were not covered by the international search then the EPO will offer the applicant the chance to request additional searches for those extra inventions.
Any additional searches must be requested and the fees paid within two months of a new communication from the EPO offering the possibility. The results of the additional searches are supplied in a standard examination report, which normally sets a four month deadline for reply.
In reply to the examination report, the applicant may limit the claims to any one of the inventions that have been searched, whether in the international phase or by the examining division. The applicant may also argue that the claims in fact relate to a single invention and request a refund of any additional search fees paid at that stage.
The new rule applies to any Euro-PCT application searched by the EPO in the international phase for which the first examination report has not yet been produced.
International search performed by another patent office
In this case, the EPO will draw up a supplementary search report for the first invention mentioned in the claims as usual. However, if the EPO thinks that the claims include more than one invention, it will now also offer the possibility of requesting additional searches for other inventions mentioned later in the claims.
Any additional searches must be requested and the fees paid within two months of the partial supplementary search report. The EPO will then perform searches on any other inventions for which search fees have been paid and issue a full supplementary search report including the results of all of the searches.
Following the full supplementary search report, the applicant may limit the claims to any one of the inventions that have been searched by the EPO. The applicant may also argue that the claims in fact relate to a single invention and request a refund of any additional search fees paid.
The new rule applies to any Euro-PCT application searched by another patent office in the international phase for which the supplementary search report has not yet been produced.
Benefit to applicants
The new procedure offers the possibility of having multiple inventions searched in a Euro-PCT application before deciding on whether to file a divisional application for each invention. This could provide a significant cost saving for applicants in cases where the additional search reveals that a divisional application is not worthwhile.
In the case that an additional search for an invention is performed on a parent application, a refund of the search fee for the corresponding divisional application can be obtained. This means that there is no extra overall cost associated with requesting an additional search on the parent application before filing the divisional.
The effect of the changes is to give applicants the same opportunity to have additional inventions searched and then to choose which invention to pursue for Euro-PCT applications as applicants have always had for direct European patent applications. The new rules also ensure that this opportunity is the same regardless of whether the EPO or another patent office searched the application in the international phase.
A detailed explanation of the new procedure from the EPO is provided here.