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L. PCT

L.6 Lack of unity

Notice from the European Patent Office dated 24 March 2010 concerning the protest and review procedures under the PCT

OJ EPO 2010, 322

1. On 1 July 2010, the European Patent Office (EPO) will begin acting as Supplementary International Searching Authority (SISA)1. As such, it will, in accordance with Rule 45bis.6 PCT, provide for a "review procedure" if it finds that an international application does not meet the requirement of unity of invention (Article 3(4)(iii) and Rule 13 PCT)2.

2. As from 1 July 2010, the present notice will replace the notice from the European Patent Office dated 24 June 2007 concerning the protest procedure under the PCT3.

3. Since 13 December 2007, when the Act revising the European Patent Convention of 29 November 2000 (EPC 2000)4 entered into force, there have been two different protest procedures before the EPO acting as International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA). Which of the two procedures applies depends on the filing date of the application concerned:

• a one-stage protest procedure for international applications filed on or after 13 December 2007, as set out in point I below;
• a two-stage protest procedure for international applications pending on 13 December 2007, as set out in point II below.

4. The entry into force on 1 July 2010 of the decision concerning the PCT review panels5 and the present notice will not affect the two protest procedures before the EPO acting as ISA and IPEA set out in points I and II. The review procedure before the EPO acting as SISA is set out in point III.

I. ONE-STAGE PROTEST PROCEDURE BEFORE THE EPO ACTING AS ISA AND IPEA FOR APPLICATIONS FILED ON OR AFTER 13 DECEMBER 2007

5. Pursuant to Rules 40 and 68 PCT as in force since 1 April 2005, the protest procedure under the PCT is a one-stage procedure requiring the examination of a protest by a "review body" constituted in the framework of the ISA or the IPEA respectively. The requirement to carry out a review of the justification for the invitation to pay additional fees under Article 17(3)(a) or Article 34(3)(a) PCT prior to requiring payment of a protest fee (Rules 40.2(e) and 68.3(e) PCT) has been deleted.

6. Following the deletion of Articles 154(3) and 155(3) EPC in the Act revising the European Patent Convention of 29 November 2000 (EPC 2000), the President of the European Patent Office decided6 that, in respect of international applications filed on or after 13 December 2007, the examination of a protest is to be carried out by a review panel composed of three members, which will be the only body examining a protest.

Outline of the procedure

7. Where additional fees for international search or international preliminary examination are paid under protest in accordance with Rule 40.2(c) or Rule 68.3(c) PCT and the protest fee set in Art. 2.21 of the Rules relating to Fees is duly paid, the protest will be referred to the review panel for a decision. With effect from 1 July 2010, the review panel will be composed as laid down in the decision of the President concerning the PCT review panels.7

(a) If the review panel finds that the protest was entirely justified, the applicant will be notified thereof and the additional fees and the protest fee will be refunded.

(b) If the review panel finds that the protest was justified only in part, the applicant will be notified thereof and the corresponding additional fees, but not the protest fee, will be refunded.

(c) If the review panel finds that the protest was entirely unjustified, the applicant will be notified thereof.

II. TWO-STAGE PROTEST PROCEDURE BEFORE THE EPO ACTING AS ISA AND IPEA FOR APPLICATIONS PENDING ON 13 DECEMBER 2007

8. Pursuant to Article 1(6) of the decision of the Administrative Council of 28 June 2001,8Articles 154(3) and 155(3) EPC 1973 will continue to apply to international applications pending on the date of entry into force of the Act revising the European Patent Convention of 29 November 2000 (EPC 2000).

Where, in respect of such international applications, additional fees for international search or international preliminary examination are paid under protest in accordance with Rule 40.2(c) or Rule 68.3(c) PCT, the EPO will continue to subject any invitation to pay such additional fees to an internal review, prior to submission of the protest to the board of appeal for examination. This review is in the nature of a service and will be carried out by a review panel constituted as laid down in Article 1 of the decision of the President of the European Patent Office dated 25 August 19929. In order to allow the applicant to consider the result of the review, the EPO will not require payment of the protest fee set in Art. 2.21 of the Rules relating to Fees until one month after the date of notification of the review to the applicant.

Outline of the procedure

9. The procedure for internal review by the review panel prior to submission of a protest to the board of appeal is as follows:

(a) If the result of the review is that the invitation was not justified, the applicant will be notified thereof and any additional fees paid for international search or international preliminary examination will be refunded. If the applicant has already paid the protest fee, this will also be refunded.

(b) If the result of the review is that the invitation was entirely justified, the applicant will be notified thereof and will also be informed that, unless he has already done so, he must pay the protest fee within one month if he still wishes to have the protest examined by the board of appeal.

(c) If the result of the review is that the invitation was justified only in part, the applicant will be notified thereof and the corresponding additional fees will be refunded. If the applicant has already paid the protest fee, the protest will be referred to the board of appeal unless the applicant indicates within one month from notification of the result of the review that he does not wish to continue with the protest. If the applicant has not already paid the protest fee, he will be informed that he must do so within one month of the date of the notification of the result of the review if he wishes the protest to be referred to the board of appeal.

10. If the protest fee is duly paid, the protest will be referred to the board of appeal for examination of the protest and a decision.

(a) If the board of appeal finds that the protest was entirely justified, the additional fees and the protest fee will be refunded.

(b) If the board of appeal finds that the protest was justified only in part, the corresponding additional fees, but not the protest fee, will be refunded.

III. ONE-STAGE REVIEW PROCEDURE BEFORE THE EPO ACTING AS SISA

11. If the EPO acting as SISA finds that the international application does not comply with the requirement of unity of invention, it will not invite the applicant to pay additional search fees as it does where it acts as the ISA for the application. Instead, it will establish the supplementary international search report (SISR) on those parts of the international application first mentioned in the claims, taking account, where applicable, of any specification by the applicant under Rule 45bis.1(d) PCT that the supplementary search is to be limited to one of the inventions identified by the ISA other than the main invention. The SISR will contain a reasoned opinion as to why the requirement of unity of invention is not met.10

Outline of the procedure

12. Upon receipt of the SISR containing a notification under Rule 45bis.6(a)(ii) PCT, the applicant may file a request for review within one month of the date of despatch of the SISR (Rule 45bis.6(c) PCT). Upon payment of the review fee set in Art. 2.22 of the Rules relating to Fees, the request will be referred to the review panel for a decision. The review panel, constituted in accordance with the decision concerning the PCT review panels11, will then proceed as set out in Rule 45bis.6(d) PCT.