Changes to the Searching of Euro-PCT Patent Applications

The European Patent Office (EPO) has announced changes to some of the rules relating to European patent applications which stem from international patent applications (Euro-PCT applications). The EPO has announced that, from 1st November 2014, patent applicants will be given the opportunity to have an extra European search carried out for Euro-PCT applications where one or more inventions have not been searched during the international phase. Under the current rules, if the EPO draws up a supplementary search report for a Euro-PCT application and considers that the application contains more than one invention, then the application automatically becomes limited to the first invention. The applicant does not get the opportunity to pick which invention they would like to be searched or to request that other inventions searched. The only way to obtain protection for the inventions which are not covered by the supplementary search report is by filing a divisional application. Under the new rule, the applicant will be given an opportunity to request that an extra search is carried out on one or more other inventions. The applicant may then be able to protect these other inventions without filing a divisional application. The EPO will draw up a supplementary search report for Euro-PCT applications where the EPO did not draw up an international search report. For Euro-PCT applications which the EPO drew up the international search report, no supplementary search is created but the examining division will issue an examination report. The examining division will use the international search report when preparing the examination report. Under the current rules for such applications an applicant must limit a Euro-PCT application to inventions which were covered by the international search. If there are inventions in the application that were not covered by the international search then the only way to obtain protection for them is to file a divisional application. Again, under the amended rule the applicant is given an opportunity to request that an extra search is carried out on one or more other inventions so that the applicant may then be able to protect these other inventions without filing a divisional application. If the supplementary search report is dispensed with and the examining division considers that the application contains more than one invention then the applicant will still be given the opportunity to request a further search. The time period for requesting the further search is defined in the rules as two months and is excluded from further processing. These rule changes should make the Euro-PCT route more flexible as applicants will no longer be restricted to inventions searched during the international stage. This may give applicants the opportunity to obtain protection for a different invention without having to incur the expense of filing a divisional application. The new rule comes into force on 1st November 2014 and will apply to applications which have not had their supplementary search report drawn up before that date. For cases where the supplementary search has been dispensed with, the new rule will apply to applications for which the first examination report or, as the case may be, the allowance communication, has not been issued. If you have questions about the contents of this article or any other aspect of European patent law, please get in touch with your usual contact at Swindell & Pearson Ltd or Christine Anglesea at [email protected].

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