EUROPEAN PATENT OFFICE
Information from the EPO
Notice from the European Patent Office dated 10 June 2014 concerning amended Rules 164 and 135 EPC
1. By decision dated 16 October 20131, the Administrative Council of the European Patent Organisation amended Rules 164 and 135 EPC. Under amended Rule 164 EPC applicants may obtain, upon payment of a (further) search fee, a search of any invention claimed which was not searched by the European Patent Office (EPO) in the international phase. Moreover, applicants may choose any invention searched by the EPO either in the international phase, in the procedure for supplementary European search or in the procedure under amended Rule 164 EPC as the basis for further prosecution of the Euro-PCT application in the European phase.
2. By decision dated 13 December 20132, the Council also amended Article 2(1), item 2, first indent, of the Rules relating to Fees (RFees) to include the search fee for searches under Rule 164 EPC.
3. The amendments will enter into force on 1 November 2014.
4. Amended Rule 164 EPC ensures that all applicants, irrespective of their choice of route (Euro-direct or Euro-PCT) and International Searching Authority (EPO or another ISA), have equal rights regarding the prosecution of their application in the European phase, especially in the case of non-unity. The amended rule gives users flexibility and establishes equal service levels between the procedures under the EPC and the PCT.
5. Amended Rule 164 EPC has a two-part structure. Rule 164(1) EPC provides for a procedure where the EPO performs a supplementary European search, i.e. where it did not act as International Searching Authority (ISA) or as Authority specified for supplementary search (SISA) in the international phase. Rule 164(2) EPC provides for a procedure if the supplementary European search report is dispensed with under Article 153(7) EPC, i.e. where the EPO acted as ISA or SISA for the application.3
6. The procedure under amended Rule 164 EPC is set out below. Detailed information will also be provided in the revised Guidelines for Examination in the EPO (Guidelines) to be published in November 2014.4
I. Searches under Rule 164(1) EPC (EPO did not act as (S)ISA)
7. The procedure under Rule 164(1) EPC mirrors that applicable to Euro-direct applications. Accordingly, other EPC provisions will apply in the same way as to any supplementary European search.5
8. If 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, a partial supplementary European search report is drawn up on those parts of the application which relate to the invention first mentioned in the claims (Rule 164(1)(a) EPC). Together with this partial search report the applicant receives an invitation to pay a further search fee for each invention other than the invention first mentioned in the claims (Rule 164(1)(b) EPC).6 As in the case of a Euro-direct application which is found to lack unity (Rule 64 EPC), this partial search report is not accompanied by a European search opinion under Rule 62 EPC.7
9. If the applicant wishes to pay further search fees in response to an invitation under Rule 164(1)(b) EPC, he must do so within the period of two months set in the invitation.8 This period is excluded from further processing under Rule 135(2) EPC as amended.9
10. The supplementary European search report is then drawn up for the parts of the application relating to inventions for which search fees have been paid (Rule 164(1)(c) EPC). The supplementary European search report is accompanied by a European search opinion under Rule 62 EPC.
11. The applicant is entitled to select, from all inventions searched by the EPO, a single invention (or general inventive concept) to be prosecuted in the European grant procedure. The applicant cannot pursue the application for any invention in respect of which no search fee has been paid.10
12. Example of a procedure in which an invitation under Rule 164(1) EPC is issued:
International phase:
- An ISA other than the EPO, e.g. the USPTO, draws up the international search report (ISR)
- The EPO does not act as SISA for the application.
European phase:
- The Search Division identifies a lack of unity (an invention A which is first mentioned in the claims, and two further inventions B and C)
- A partial supplementary European search report for invention A is drawn up (Rule 164(1)(a) EPC) and issued together with an invitation to pay a further search fee for each of the inventions B and C (Rule 164(1)(b) EPC)
- The applicant pays a further search fee for invention C
- A supplementary European search report is then drawn up for inventions A and C (Rule 164(1)(c) EPC).
Options for the applicant:
- The applicant can pursue invention A or C in examination proceedings
- If the applicant limits the application to, for example, invention C, inventions A and B can be pursued in divisional applications
- A divisional application directed to invention A may entitle the applicant to a refund under Article 9(2) RFees.
II. Searches under Rule 164(2) EPC (EPO acted as (S)ISA)
13. If the supplementary European search report is dispensed with, the Examining Division will start the examination upon expiry of the limit set in the communication under Rule 161/162 EPC.11 Where it considers that an invention is claimed which was not searched in the international phase, it will invite the applicant to pay a search fee (Rule 164(2)(a) EPC).12 This means that, Rule 137(5) EPC notwithstanding, amendments to the claims filed within the time limit set in the communication under Rule 161/162 EPC may relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept, and this subject-matter will be searched if a search fee for it is paid under Rule 164(2)(a) EPC.
Cases in which an invitation under Rule 164(2)(a) EPC is issued also include those where the EPO has acted as SISA and arrived at a finding of lack of unity under Rule 45bis.6 PCT, and those where the applicant imports an invention from the description into the claims.13
14. If the applicant wishes to pay search fees in response to an invitation under Rule 164(2)(a) EPC, he must do so within the period of two months set in the invitation.14 This period is excluded from further processing under Rule 135(2) EPC as amended.15
15. If no search fee is paid, the special procedure under Rule 164(2) EPC ends upon expiry of the time limit set in the invitation. In such a case, the Examining Division issues a communication under Article 94(3) and Rule 71(1) and (2) EPC and, in accordance with standard practice, requires the deletion of any non-searched subject-matter.16
16. Under Rule 164(2)(b) EPC, if a search fee is paid the results of the search are communicated to the applicant as an annex to a communication under Article 94(3) and Rule 71(1) and (2) or Rule 71(3) EPC. The public is informed in the European Patent Register that search results have been issued. Since the application is within the competence of the Examining Division, any objections relating to searched inventions will be set out in the communication under Article 94(3) EPC (Rule 164(4) EPC). This communication also gives the applicant an opportunity to comment, within the time limit set therein, on the Examining Division's findings and the annexed search results, and to amend the description, claims and drawings of his own volition.17
17. Pursuant to Rule 164(2)(c) EPC, the communication under Article 94(3) EPC invites the applicant to select, from all inventions searched by the EPO, a single invention (or general inventive concept) to be prosecuted in the European grant procedure.18 The applicant cannot pursue the application for any invention in respect of which no search fee has been paid.19
18. Example of a procedure in which an invitation under Rule 164(2) EPC is issued:
International phase:
- The EPO as ISA identifies a lack of unity (an invention A which is first mentioned in the claims, and two further inventions B and C)
- A partial international search report for invention A is drawn up (Article 17(3)(a) PCT) and issued together with an invitation to pay an additional search fee for each of the inventions B and C
- The applicant pays an additional search fee for invention B (Rule 40.2 PCT)
- The ISR is then drawn up for inventions A and B.
European phase:
- The Examining Division considers that inventions A, B, C and D are claimed (invention D was taken from the description) and invites the applicant to pay a search fee for each of the inventions C and D (Rule 164(2)(a) EPC)
- The applicant pays a search fee for invention D
- The result of the search for invention D is communicated to the applicant (Rule 164(2)(b) EPC)
Options for the applicant:
- The applicant can pursue one of the inventions A, B or D in the further prosecution of the application (Rule 164(2)(c) EPC)
- If the applicant limits the application to, for example, invention B, inventions A, C and/or D can still be pursued in divisional applications
- A divisional application directed to invention A or D may entitle the applicant to a refund under Article 9(2) RFees.
III. Fee reductions and refunds
19. Rule 164(5) EPC provides for a refund of any search fee paid under Rule 164(1) or (2) EPC if the Examining Division finds, upon request, that the communication under Rule 164(1)(b) or (2)(a) EPC was not justified. In the procedure under Rule 164(2) EPC the Examining Division may deal with this issue in the communication under Rule 164(2)(b) EPC, which is accompanied by the search results.20
20. Rule 164(5) EPC does not give the applicant an opportunity to dispute the payment of additional international search fees. If the applicant wants a refund of any additional fee paid to the EPO as ISA under Rule 40.2(a) PCT, he must file a protest under Rule 40.2(c) PCT in the international phase.21
21. Any reduction in the fee for a supplementary European search report provided for by decision of the Administrative Council under Article 153(7) EPC applies exclusively to the search fee paid under Rule 159(1)(e) EPC. This means that the reduction does not apply to any further search fee paid under Rule 164(1)(b) EPC, irrespective of whether that fee is paid for an invention which was searched by the (S)ISA.22
22. Article 9(2) RFees, which provides for a refund where a search is based on an earlier search report drawn up by the EPO, also applies in the procedure under Rule 164 EPC. As a result, a search fee paid under Rule 164(1) or (2) EPC may be refunded if certain further requirements23 are met. Accordingly, a search performed under Rule 164(1) or (2) EPC may give rise to a refund of a search fee paid in respect of a later application (e.g. a divisional application).
IV. Transitional regime
23. Amended Rule 164(1) EPC applies to any application for which the supplementary European search report under Article 153(7) EPC has not been drawn up by 31 October 2014.
24. Amended Rule 164(2) EPC applies 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 by 31 October 2014.
1 Decision of the Administrative Council CA/D 17/13 of 16.10.2013, (OJ EPO 2013, 503).
2 Decision of the Administrative Council CA/D 14/13 of 13.12.2013, (OJ EPO 2014, A5).
3 Decision of the Administrative Council CA/D 11/09 of 28.10.2009 (OJ EPO 2009, 594).
4 See in particular Guidelines C-III, 2.3. Refer-ences to the Guidelines in the present notice refer to the version to be published in November 2014.
5 Guidelines B-VIII, 3.4 (concerning Rule 63 EPC) and B-VIII, 4.5 (concerning Rule 62a EPC).
6 Guidelines B-VII, 2.3.
7 Guidelines B-XI, 5.
8 If an automatic debit order is on file, these fees will be debited automatically. For further information see Annex A.1 to the Arrangements for deposit accounts (ADA), supplementary publication 4, OJ EPO 2014, 13.
9 See footnote 1 above.
10 Decision G 2/92 (OJ EPO 1993, 591) applies mutatis mutandis; see Guidelines E-VIII, 4.2; H-II, 7.2 and 7.4.2.
11 In special cases where the applicant has waived the communication under Rule 161/162 EPC, see the notice from the EPO dated 5 April 2011 concerning updated Form 1200 (entry into the European phase) and the possibility to waive the right to the communication under Rules 161(1) or (2) and 162 EPC (OJ EPO 2011, 354).
12 Guidelines C-III, 2.3; F-V, 13.1; H-II, 6.2.
13 Guidelines C-III, 2.3, H-II, 6.2.
14 If an automatic debit order is on file, these fees will be debited automatically. For further information see Annex A.1 to the Arrangements for deposit accounts (ADA), supplementary publication 4, OJ EPO 2014, 13.
15 See footnote 1 above.
16 Guidelines C-III, 3.1.1-3.1.2.
17 Guidelines C-III, 2.3; H-II, 2.3 and 7.4.1.
18 Guidelines C-III, 2.3 and 3.1.2; E-VIII, 4.2.
19 Decision G 2/92 (OJ EPO 1993, 591) applies mutatis mutandis; see Guidelines H-II, 7.2.
20 Guidelines A-X, 10.2.2; B-VII, 2.1; C-III, 3.3.
21 Guidelines C-III, 3.3, and decision of the President of the EPO dated 24 March 2010 providing for review panels for the implementation of the protest and review procedures under the PCT (OJ EPO 2010, 320).
22 Guidelines A-X, 9.3.1.
23 Decision of the President of the EPO dated 21 February 2014 concerning the refund of the search fee under Article 9(2) RFees (OJ EPO 2014, A29).