Good News: The European Patent Office Repeals Another Unpopular Rule

The EPO administrative council meeting last week was the scene of not one but two rule changes by the EPO. Firstly, as J A Kemp reported last week, the EPO is set to repeal the unpopular 24-month term for filing divisional applications.

Secondly, it has emerged that the administrative council also voted to repeal the ban on performing extra searches on a European regional phase application that is found to lack unity of invention. Under the current rules, if a European regional phase application, derived from a PCT application, is found to lack unity of invention, only the first invention will be searched, and it is not possible to have the other inventions searched. As unsearched subject matter may not be prosecuted in a European patent application, this left applicants with no choice but to file a divisional application to prosecute the unsearched subject matter. This was unpopular with applicants, as it increased cost.

The EPO has now announced that Rule 164 EPC will be amended to allow applicants to request additional searches in the European regional phase. This brings the rule closer to the form it had before an amendment in 2007 under the "EPC 2000" initiative. Specifically, if the EPO finds that a European regional phase application lacks unity of invention, the first invention will be searched, and the applicant will be given an opportunity to pay additional search fees within a 2-month term to have any other invention also searched. This provides the applicant with the possibility to prosecute any of the claimed inventions in the European regional phase application, and reduces the need to file divisional applications to have the subject matter of interest searched.

The new rule will come into force on 1 November 2014. For cases where the EPO was not the International Searching Authority (ISA), the new rule will apply where the supplementary European search report is drawn up on or after 1 November 2014.

For cases where the EPO was the ISA, applicants will be able to request additional searches even if they passed over the opportunity to pay extra search fees to the EPO during the international phase. This will apply to cases where an EPO examination communication has not been issued by 1 November 2014. This rule change has been published by the EPO.

J A Kemp partner Mark Roberts commented "These two rule changes by the EPO show that the EPO has listened to users. It is laudable that the EPO is prepared to take such positive action to correct previous legislative initiatives that have failed to meet their objectives. Applicants will welcome both of these rule changes as improving European patent prosecution and reducing cost."

To discuss how either of these changes may affect your cases, please get in touch with your usual J A Kemp contact.