Starting in 2014, all PCT applicants who then enter the EP phase will have access to significantly wider and more cost-effective search options during that phase.

In fact in a very recent decision, of 16 October 2013, the Administrative Council of the European Patent Office (EPO) decided as follows:

1. PCT applications where the International Searching Authority (ISA) was not the EPO

As is known, for this type of application the EPO carries out a “supplementary” search after the EP phase is entered. Until now, if in the course of such a supplementary search the EPO Examiner found that the claims lacked unity, the EPO would search only the first invention, but would not search the other inventions, even for a fee. This means that if the applicant wished to pursue the other inventions, it was necessary to file one or more divisionals, which of course is an expensive exercise that, at present, needs to be performed without the benefit of a search indicating whether the claims of the divisional(s) even stand a chance of being granted.

Starting in November 2014, for PCT applicants who did not select the EPO as the ISA, if in the course of the supplementary search the EPO finds that the pending claims cover more than one invention, the EPO will search the first invention (as it does now) and will also offer the applicant the opportunity to pay additional search fees in order to obtain searches for the inventions other than the first one.

2. PCT applications where the ISA was the EPO

For this type of application the EPO does not carry out a “supplementary” search after the EP phase is entered. Rather, the EPO proceeds to examine the application on the basis of the international search. Until now, if in the course of such an examination the EPO Examiner found that the claims had been held to lack unity during the international phase, but no additional search fee had been paid during that phase, the EPO would examine only the first invention, and would not search or examine the other inventions, even for a fee. This meant that, here too, if the applicant wished to pursue the other inventions, it was necessary to file one or more divisionals, again leading to the disadvantages outlined above.

Starting in November 2014, for those PCT applicants who did select the EPO as the ISA, if in the course of examination the EPO finds that the pending claims cover more than one invention but no additional search fees were paid during the international phase, the EPO will examine the first invention (as it does now) and will also offer the applicant the opportunity to pay additional search fees in order to obtain searches for the inventions other than the first one.

These new searching options will allow the applicant to make an informed decision on whether to file divisionals for inventions other than the first one, as well as which invention to actually pursue in the EP phase of the PCT application. These options therefore clearly represent a most welcome change in EPO patent practice, as they will lead to significant cost savings while ensuring the broadest possible patent protection.


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