Hot on the heels of its removal of the restrictions for filing divisionals, the EPO recently announced a change in the way applications originating from a PCT (international) application will be treated if found to lack unity of invention. This change is excellent news for applicants because it brings to an end a particularly unfair feature of patent prosecution in Europe discussed previously and could reduce the need for costly divisionals.
Before it will grant a patent, the EPO requires the subject matter of all claims to have undergone a search for prior art carried out by the EPO and will not generally allow applicants to amend to claims that have not been searched by the EPO. Under the revised rule, due to take effect 1 November 2014, if the EPO discovers claims to unsearched subject matter in a PCT application entering European regional phase, the EPO will give the applicant an opportunity to have that subject matter searched.
While the situation under the new rules might seem unremarkable, it removes a provision unfairly penalizing applicants using the PCT who elect an office other than the EPO as the international searching authority (ISA). It is also good news for applicants who do elect the EPO as ISA as they will have an extra opportunity to have subject matter searched.
If The EPO Was Not The ISA
Under the current rules, the EPO performs a supplementary search for PCT applications entering EP regional phase if the EPO was not elected as either ISA or supplementary international searching authority (SISA), i.e. if the EPO has not previously performed a search of the application. If after a supplementary search the EPO considers there to be a lack of unity and identifies multiple inventions, then examination will proceed only for the invention listed first in the claims. In contrast to searches performed by the EPO for direct-filed non-PCT applications, the applicant is not currently given the opportunity to pay for further searches to be performed for the other inventions. Since the applicant is not allowed to amend to unsearched subject matter, a costly divisional is required if the applicant wants to pursue protection for anything other than the first-listed invention.
The rule change will apply to all applications whose supplementary search report is not drawn up by 1 November 2014. Thereafter the EPO will invite the applicant to have additional inventions searched if it identifies a lack of unity in the supplementary search carried out on regional phase entry.
If The EPO Was The ISA
Under the current rules, the applicant will have had a single opportunity to obtain additional searches from the EPO as ISA during the international phase. If the applicant does not have all subject matter searched , they will not be able to amend to the unsearched subject matter later in prosecution. A divisional would be necessary to pursue protection for such subject matter.
The rule change will apply to any application whose first examination report is not drawn up by 1 November 2014. Thereafter, if the EPO notices at the start of examination that some of the claims relate to subject matter not searched during the international phase, the EPO will invite the applicant to have this subject matter searched. It is not clear yet what form this invitation will take or whether it will have a delaying effect on prosecution. However, many applicants will welcome the opportunity to have further searches performed.
Which Current Applications Will Be Affected By The Rule Change?
The rule change will affect applications whose first examination report or supplementary search report is not drawn up by 1 November 2014. Since it is hard to predict when such reports will be issued, it is hard to predict whether an application will be affected by the rule change. An application currently waiting for a first examination report or supplementary search report might see one issued within the next 12 months, and so be assessed for unsearched subject matter according to the current rule, but equally might not and so be assessed under the new rule. On the other hand, for applications entering European regional phase at some point in the next 12 months, there may be some steps we can take to slow down the process and increase the chance of the application being assessed under the new rule. For more details, contact your R&G attorney.
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.