ADMINISTRATIVE COUNCIL
Decisions of the Administrative Council
Decision of the Administrative Council of 16 October 2013 amending Rule 135 and 164 of the Implementing Regulations to the European Patent Convention (CA/D 17/13)
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION,
Having regard to the European Patent Convention (hereinafter referred to as "EPC") and in particular Article 33(1)(c) thereof,
On a proposal from the President of the European Patent Office,
Having regard to the opinion of the Committee on Patent Law,
HAS DECIDED AS FOLLOWS:
Article 1
The Implementing Regulations to the EPC shall be amended as follows:
1. Rule 164 shall read as follows:
"Rule 164
Unity of invention and further searches
(1) If the European Patent Office considers that the application documents which are to serve as the basis for the supplementary European search do not comply with the requirement of unity of invention, it shall:
(a) draw up a partial supplementary search report on those parts of the application which relate to the invention, or the group of inventions within the meaning of Article 82, first mentioned in the claims;
(b) inform the applicant that, for the supplementary European search report to cover the other inventions, a further search fee must be paid, in respect of each invention involved, within a period of two months; and
(c) draw up the supplementary European search report for the parts of the application relating to inventions in respect of which search fees have been paid.
(2) If the supplementary European search report is dispensed with and the Examining Division considers that in the application documents which are to serve as the basis for examination an invention, or a group of inventions within the meaning of Article 82, is claimed which was not searched by the European Patent Office in its capacity as International Searching Authority or Authority specified for supplementary international search, the Examining Division shall:
(a) inform the applicant that a search will be performed in respect of any such invention for which a search fee is paid within a period of two months;
(b) issue the results of any search performed in accordance with paragraph (a) together with:
- a communication under Article 94, paragraph 3, and Rule 71, paragraphs 1 and 2, in which it shall give the applicant the opportunity to comment on these results and to amend the description, claims and drawings, or
- a communication under Rule 71, paragraph 3,
and
(c) where appropriate, in the communication issued under paragraph (b), invite the applicant to limit the application to one invention, or group of inventions within the meaning of Article 82, for which a search report was drawn up by the European Patent Office in its capacity either as International Searching Authority or as Authority specified for supplementary international search, or for which a search was performed in accordance with the procedure under paragraph (a).
(3) In the procedure under paragraph 2(a), Rules 62a and 63 shall apply mutatis mutandis.
(4) Rule 62 and Rule 70, paragraph 2, shall not apply to the results of any search performed in accordance with paragraph 2.
(5) Any fee paid under paragraphs 1 or 2 shall be refunded if the applicant requests a refund and the Examining Division finds that the communication under paragraphs 1(b) or 2(a) was not justified."
2. Rule 135(2) shall read as follows:
"(2) Further processing shall be ruled out in respect of the periods referred to in Article 121, paragraph 4, and of the periods under Rule 6, paragraph 1, Rule 16, paragraph 1(a), Rule 31, paragraph 2, Rule 36, paragraph 2, Rule 40, paragraph 3, Rule 51, paragraphs 2 to 5, Rule 52, paragraphs 2 and 3, Rules 55, 56, 58, 59, 62a, 63, 64, Rule 112, paragraph 2, and Rule 164, paragraphs 1 and 2."
Article 2
Rules 164 and 135 EPC as amended by Article 1 of this decision shall enter into force on 1 November 2014.
Article 3
(1) Rule 164(1) EPC as amended by Article 1 of this decision shall apply to any application for which the supplementary European search report under Article 153(7) EPC has not been drawn up at the date of its entry into force.
(2) Rule 164(2) EPC as amended by Article 1 of this decision shall apply to any application for which the first communication under Article 94(3) EPC and Rule 71(1) and (2) EPC or, as the case may be, Rule 71(3) EPC has not been drawn up at the date of its entry into force.
Done at Munich, 16 October 2013
For the Administrative Council
The Chairman
Jesper KONGSTAD