The European Patent Office Implements Changes Regarding Lack of Unity in National Phase Applications

On November 1, 2014, the European Patent Office (EPO) will implement a revision to Rule 164 EPC that allows Patent Cooperation Treaty (PCT) applicants to have more than one invention searched when a unity of invention objection is present, regardless of whether the EPO was selected as the International Searching Authority (ISA) during the international phase. Under current practice, if the EPO is not the selected ISA, a supplemental European search report will address only the first invention mentioned in the claims, and any further inventions can only be pursued through divisional practice. Conversely, however, if the EPO is the selected ISA, applicants can request and pay for additional searches before selecting the invention to be pursued.

The new Rule 164 EPC addresses this disparity by allowing applicants to request and pay for additional searches, and select the desired invention for further prosecution, regardless of whether the EPO is the selected ISA. For cases where the EPO was not the ISA, the new rule will apply if the supplementary European search report is created on or after November 1, 2014, while the rule will apply to cases where the EPO was the ISA if an EPO examination communication has not been issued by November 1, 2014.

To read the new Rule 164 EPC, click here.

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