On 15th January, the EPO opened a consultation period regarding possible changes which would allow applicants of European applications that are based on PCT applications (Euro-PCT applications) to have the EPO carry out additional searches where the EPO find a lack of unity of invention. The consultation period is set to end on 25th February. My question is why the consultation period needs to be more than a few days when all anyone needs to say is “Yes please”!
When the EPO carry out a search, it is not uncommon for them to conclude that the claims relate to two or more inventions – and therefore that the claims lack unity of invention. This can happen where the application includes two or more independent claims directed to different aspects of the invention. It can also happen where the EPO conclude that the first claim in the application lacks novelty, and therefore look to the dependent claims of the application to try and identify the invention. Since the dependent claims are often directed to diverse preferred features of the invention, it is not surprising that, when these claims are looked at, they are found to relate to different inventions.
Where the application searched was one filed with the EPO directly, i.e. it was not originally a PCT application, if the EPO find that the claims relate to two or more inventions, they will give the applicant the opportunity to pay additional search fees so that all of the inventions can be covered by the search. In this way, applicants can have all the claims searched and therefore decide which invention to proceed with in the application. If the applicant decides that they wish to cover two or more of the inventions, they will need to file divisional applications, but at least they will do so having seen the results of the EPO searches, and will have a good idea of the prior art they will need to address during the examination of the divisional application before they incur the costs of filing.
Similar provisions also applied some years ago for Euro-PCT applications, but were later withdrawn. Now, if a PCT application is searched by the EPO in the international phase, there is no further opportunity to have a search carried out after entry of the European regional phase. Thus, if the EPO raise a lack of unity of invention objection in the international phase and no additional search fees are paid to have the claims searched, it is not possible to have those claims searched after entry to the European phase. The unsearched claims will need to be deleted. They can be included in a divisional application, but you will not have the benefit of having the search results from the EPO before you file the divisional application. If the International Search was not carried out by the EPO, the EPO will carry out a search of the European application on regional phase entry. However, the current rules only permit the EPO to carry out a supplementary search for one inventive concept. Therefore, if they consider that your claims relate to two or more inventions, it will only be possible to have the search carried out for one of these.
The proposed changes on which the EPO are consulting would allow applicants of Euro-PCT applications (on which a unity of invention objection and partial search report was issued by the EPO in the international phase) to pay a search fee on entering the European regional phase and have the other (unsearched) claims searched. Similarly, for applicants of Euro-PCT applications that were not searched by the EPO in the international phase, but for which the EPO issue a supplementary search report in the regional phase and raise a lack of unity of invention objection, there will be an opportunity to have the supplementary search report extended to cover the other claimed inventive concepts.
Overall, we hope that the proposed rule changes are adopted as soon as possible to give applicants of Euro-PCT applications the same ability to have their claims searched as applicants for direct European applications.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.