Pick and Choose EPO to search all inventions covered by a EURO-PCT subject to payment of fees

28 October 2013

With a rule change entering into force on 1 November 2014, the Administrative Council of the European Patent Office (EPO) has decided to adopt a much more flexible system for handling EURO-PCT applications covering more than one invention. Under the new rules applicant will have the possibility of choosing which inventions should be searched during European regional phase. The EPO will search the first mentioned invention or in event EPO was International Searching Authority (ISA), rely on the international search as they do under the current procedure. However, applicant will get the possibility of getting one or more additional inventions searched subject to payment of a fee.

Under the current rules applicants who used the EPO as ISA in the international phase faced a disadvantage in the European regional phase because EPO would only examine subject-matter searched during international phase. Inventions not searched in the international phase could only be protected by filing of divisional applications. Under the new rules a divisional application is no longer required, instead additional inventions can be searched and examined subject to payment of one or more additional search fees. The applicant can challenge the unity finding during examination and will get the additional search fee(s) refunded if the fees were unjustified.

A EURO-PCT will only be allowed to cover one invention, but applicant will be given the possibility of choosing which invention. Thus applicants can now use the EPO as ISA without the risk of a disadvantage upon entering European regional phase. We expect applicants to rely on the new procedure in future, as it results not only in postponement of costs but also in a considerable reduction in the search fees. The international search fee currently charged by the EPO amounts to 1,875 EUR, while the European Search Fee is 1,165 EUR.

Applicants who did not use EPO as ISA in the international phase will under the new rules also gain more flexibility in choosing which invention a EURO-PCT application should cover.

The new rules apply to applications for which a first office action (Art 94(3) EPC) has not issued or for which the supplementary European Search Report has not been established on 1 November 2014. This usually takes place 6-12 months after EP phase entry, so in effect the new rules apply to all new PCT application and to most pending PCT applications entering EP phase.

HØIBERG will be pleased to assist you with additional information on challenges of European patent applications directed to more than one invention