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[Jack]

Situation:    All claims of an ex-PCT application are searched (covered) in the international search report (carried out by USPTO). Enters the regional phase (EP) and the Examiner, in the supplementary search report, objects for lack of unity (three groups of invention) and, according to Rule 164(1) EPC 2000, only the first group of invention is searched. The Examiner further indicates that the other two groups of inventions can only be further prosecuted in one or more divisional applications. 

Rule 164(2) EPC 2000 reads as follows:  "Where the examining division finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the international search report or, as the case may be, by the supplementary search report, it shall invite the applicant to limit the application to one invention covered by the international search report or the supplementary search report."

So, can one interpret the Rule 164(2) EPC as, that one can file group II and/or group III to replace the group I, as they were covered by the international search report, in the parent application?

Thanks
Jack


 

[patmatt]

Did the EPO invited you to pay further search fees?

see guidelines:

"Invitation to pay further search fees
The Search Division will inform the applicant of the lack of unity of invention
in a communication accompanying the partial search report and indicate
that a further search fee must be paid for each invention other than the one
first mentioned in the claims, if the search is to cover these inventions as
well. The payment of these fees must take place within a period to be set by
the Search Division, which may not be less than two weeks and may not be
more than six weeks (Rule 64(1)). If the automatic debiting procedure is
being used for the application, the applicant must inform the EPO within the
period set if he does not want all or any of the further inventions to be
searched. Otherwise all the further search fees due will be debited
automatically on the last day of the period. Searches relating to inventions
for which further search fees have been paid within the fixed period receive
preferential treatment from the Search Division. The search report is to be
drawn up for all those parts of the patent application which relate to
inventions in respect of which search fees have been paid. The search
report identifies the separate inventions and indicates the subject-matter
and corresponding claims (or parts of claims – see Rule 44(2)) for which a
search has been made."

In case the EPO asked for further search fees and the further two search fees were not paid, the EPO is right. In case no communication concerning additional search fees were issued - I have to look again.

Regards

Matt

[Jack]

Under EPC 2000, the EPO will not provide the applicant with the opportunity to pay further search fees and will proceed to search only the invention mentioned first in the claims, without any input from the applicant.

My situation is to be dealt under EPC 2000.

[patmatt]

Hello Jack,

maybe I'm a little bit slow, BUT Rule 64 reads:

(1) If the European Patent Office considers that the European patent application does not comply with the requirement of unity of invention, it shall draw up a partial search report on those parts of the application which relate to the invention, or the group of inventions within the meaning of Article 82, first mentioned in the claims. It shall inform the applicant that for the European search report to cover the other inventions, a further search fee must be paid, in respect of each invention involved, within a period to be specified, which shall neither be shorter than two weeks nor exceed six weeks. The European search report shall be drawn up for the parts of the application relating to inventions in respect of which search fees have been paid.

Also the guidelines mention:

7.9 Lack of unity during search
In many and probably most instances, lack of unity will have been noted and
reported upon by the Search Division which will have drawn up a partial
search report based on those parts of the application relating to the invention,
or unified linked group of inventions, first mentioned in the claims. The
Search Division may neither refuse the application for lack of unity nor
require limitation of the claims, but must inform the applicant that, if the
search report is to be drawn up to cover those inventions present other than
the first mentioned, then further search fees must be paid within a stipulated
period.

Somehow it's hard to believe that the EPO will not inform the applicant about the further search fees only because it is a Euro-PCT. As already mentioned above, in case the EPO already asked to pay the additional search fee than it is the only way to divide out a further application. (Please remember the new regulations concerning divisional applications coming in force next April...)

Regards

Patmatt

[Jack]

Patmatt,

Rule 64 does not relate to Euro-PCT applications and thus can be kept aside.

As already mentioned in my second post of this thread, according to Rule 164 EPC 2000, EPO would not invite the applicant to pay further search fees and will proceed to search only the invention mentioned first in the claims (refer, for example, www.kstrode.co.uk/news/EPC2000.pdf). Thus, my question is still open.

[patmatt]

Hello Jack,

I just had a telephone call with the EPO - they confirmed the proceedings in your case, just forget my comments above.

I found some details, which might be helpful, maybe you have a a look at http://documents.epo.org/projects/babylon/eponet.nsf/0/7c5ef05581e3aac0c12572580035c1ce/$FILE/applicants_guide_part2_en.pdf

which is the applicant's guide, see section E-XIII:

No supplementary search performed: EPO was ISA
437 Upon entry into the European phase the applicant must choose one
invention from those searched during the international phase by the
EPO as ISA to form the basis of the examination. If this requirement is
not met, the applicant will be invited by the examining division to
indicate which invention he wishes to pursue.

Supplementary search performed: EPO was not ISA
438 If after entry into the European phase a supplementary European
search is to be performed (EPO was not ISA), it will be carried out only
on the invention or group of inventions first mentioned in the
claims (as possibly amended upon entry into the European phase),
regardless of whether an ISR was drawn up in respect of that invention
in the international phase and regardless of any earlier findings as to
unity of invention in the international phase.

439 Although the EPO is in no way bound by the opinion of the ISA on the
question whether the application meets the requirement of unity, the
EPO will, given the fact that the practices of the ISAs are based on the
same Guidelines (Chapter 10 of the ISPE Guidelines), in many cases
share that opinion. Therefore, where the ISA considered the requirement
of unity not to be met, the applicant is advised to amend the
application in due time in such a way that the invention on which the
applicant wishes the supplementary search and the examination to be
based, is that first mentioned in the claims.

440 If a supplementary European search report is to be drawn up, the
invention that was the subject of the supplementary European search is
the only invention that can be examined (see points 435-436). If the
applicant wishes a different invention to be examined he will have to file
a divisional application.

Best regards

Patmatt

[jern]

Hi, I realise that this is a dormant thread, but maybe someone will read this post.

Patmatt cites an interesting quote from the EPO Applicant's Guide, saying that the applicant must limit to the invention searched in the supplementary search. But is there any legal basis for this? Art 164(2) EPC (in English and French, anyway) seems to be worded less restrictively than is suggested by Patmatt's citation (ie the Applicant can limit to any invention as long as it was searched by the ISA or the EPO). In the German version of Art. 164(2), it could be argued that the use of "gegebenenfalls" and "bzw." is intended to define a causal link between the fact of a supplementary search being performed, and the invitation to limit to the invention covered by the supplementary search. Moot point. But this causal link is not present in the wording of the EN or FR versions of the article.

Anyone any the wiser?

[bartmans]

It seems that the EPO itself interprets Rule 164 as explained by Jack and in the end admitted by Patmatt.
However, this is something that has not yet been discussed by the Boards of Appeal and thus the interpretation of the EPO may be not the right one.
I am looking forward to the first applicant who would challenge the behaviour of the EPO.

[Jack]

Following is the response from EPO to my query relating to Rule 164(2) EPC:

Rule 164(2) EPC applies both to the case where the EPO did act as ISA, and the international search report is relevant, and to the case that the EPO did not act as ISA, and the supplementary search report is relevant. Hence, if the Examining Division considers that the application documents which are to serve as basis for the European grant procedure do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the relevant search report, it must invite the applicant to limit the application to one invention covered by the international search report (first case) or, when a supplementary search report has been established (second case), by that report.

Finally, we would like to draw your attention to the fact that for the time being we do not have any case law as regards Rule 164(2) EPC.

Jack