Rule 164 EPC is amended with effect from 1 November 2014 to allow a further search of previously unsearched subject matter in European regional phase applications (E-PCT applications). The change is particularly welcomed by applicants, for whom the previous system was generally considered unfair.
Under previous Rule 164 EPC, whether or not the European Patent Office (EPO) acted as International Searching Authority (ISA) it was impossible to request further searches (i.e.searches in excess of the supplementary European search) in the European regional phase of a PCT application. However, following the latest changes (which have been clarified by the November 2014 edition of the Guidelines for Examination in the EPO), the EPO routinely invites applicants to pay further search fees for any non-unitary or unsearched subject matter present in the claims on file at the start of examination.
In cases where the EPO acted as ISA, the invitation will issue if the presented claims have not been searched by the EPO in the International phase. Where the EPO did not act as ISA, the invitation will issue together with a partial supplementary search report if the presented claims are non-unitary. Thus, when the EPO did not act as ISA, the procedure is essentially the same as for a direct European application.
For further information, please see our briefing on this topic, which highlights some of the procedural aspects of the amended rule.