6.2. Euro-PCT applications

An applicant may pay additional search fees in the international phase if invited to do so by the ISA under Art. 17(3)(a) PCT. Once the application has entered the European phase, R. 164 EPC, as in force from 1.11.2014, allows applicants to obtain, upon payment of a (further) search fee, a search of any invention claimed which was not searched by the EPO in the international phase. Applicants may choose any invention searched by the EPO either in the international phase, in the procedure for supplementary search or in the procedure under R. 164 EPC as a basis for further prosecution of the European phase (see notice of 10 June 2014, OJ 2014, A70, also for the transitional regime).

The following decisions concerning the former version of R. 164 EPC are still relevant.

In J 3/09, the Legal Board of Appeal confirmed in respect of R. 164 EPC (as then in force) that although the procedure on entry of an application into the European phase where the EPO had acted as the ISA changed with the coming into force of EPC 2000, the responsibility for establishing whether or not the application met the requirements of unity of invention still ultimately rested with the examining division, and the opinion of the EPO acting as the ISA on lack of unity was not final or binding on the examining division. The board observed that the practice of the examining division in this respect remained as before, noting in particular that to the extent that an objection of non-unity raised by the ISA turned out to be unjustified, the applicant was entitled to have the whole subject-matter of his unitary invention searched. The board in T 1285/11 followed this reasoning, adding that the fact that the applicant did not pay further search fees or protest fees in the international phase could not be seen as a tacit agreement with the findings of non-unity of the ISA.

For further decisions concerned with the interpretation and application of R. 164 EPC as in force until 31.10.2014), see the 9th edition of this book, II.B.6.2.