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Tuesday, 21 October 2014

EPO Relaxes Unity Procedural Rules - how it works in practice

Sometimes, topical and important IP developments do not lend themselves to levity or cat-based metaphors.  The relaxing of the procedural rules of the European Patent Office, in the case that the claims of an International application under the Patent Cooperation Treaty are considered not to fulfill the requirements of unity of invention when regional phase is entered before the EPO, is one such case.  This Kat is delighted that his colleague and authoritative commentator on the European Patent Convention Derk Visser has wrestled with the practical application of the new rules and their interplay with existing rules, and has submitted the following explanation of the change to Rule 164 EPC that comes into effect shortly (briefly reported by the IPKat last year here).  Over now to Derk:

1 Amendment of Rule 164 EPC

Merpel contemplates unity of invention
In under a fortnight, on 1 November 2014, the amended Rule 164 of the European Patent Convention will enter into force. The amendment will make the life of Euro-PCT applicants easier by allowing more inventions to be searched on entry into the European phase.

Under the old Rule 164 (links here at the time of writing, but this will probably be over-written in due course) the possibility to have inventions searched on entry into the European phase other than the ones searched in the international phase was very limited. If the EPO was not the International Searching Authority (ISA), the applicant could amend the claims without restriction (provided of course they are disclosed in the application as filed) and the EPO would search only the invention first mentioned in the claims (the so-called supplementary European search). Any non-unitary inventions could not be searched on entry. If the EPO was ISA, no search would be carried out on entry and the applicant had to continue prosecution with the invention or one of the inventions searched by the ISA. As a result, many applicants who did not want to prosecute the invention searched by the ISA had to file divisional applications on entry, trying to avoid paying fees for the discontinued parent application.

The amendment of Rule 164 redresses the imbalance between applicants that may use an ISA other than the EPO and those that have to use the EPO. Rule 164(1) gives the search procedure for the former and Rule 164(2) for the latter. A summary of the new search procedures will be given below. Further details can be found in OJ EPO 2013, 503 and OJ EPO 2014, A70.

2 Amendment of the application
On entry into the European phase under the new procedure, the applicant may make any amendment allowed by Article 123(2) EPC, i.e. any amendment that does not extend the subject-matter of the PCT application as filed. He may continue the prosecution before the EPC with the claims as originally filed in the PCT application; he may use the claims as amended in the international phase; he may amend the claims using subject-matter from the claims as originally filed or from the description. The amended claims need not be unitary with the claims pending in the international phase.

These voluntary amendments may be filed either on entry into the European phase or in response to the Rule 161 communication. The Rule 161 communication is issued shortly after entry into the European phase and gives the applicant a 6-month period for response. If the EPO was ISA and has noted deficiencies in the application, which it usually does, it will draft a negative written opinion. The applicant must address these deficiencies in his response to the Rule 161 communication, by argument and / or amendments.

3 Searches where the EPO was not ISA
If the EPO was not ISA, the applicant has to pay normally a search fee and an examination fee on entry. A search division of the EPO will search the claims as pending after any amendment on entry and in response to the Rule 161 communication. The European search is independent of any search carried out by the ISA.

The search examiner assesses the unity of these claims and, if found to be unitary, the new procedure under Rule 164(1) will not be applied and the search examiner will carry out a supplementary search. When completed, the supplementary search report with search opinion will be sent to the applicant. The EPO will invite him to respond to the search opinion and indicate whether he wants to proceed with the application in view of the search results.

If the claims are found to be non-unitary, the search examiner will draft a partial supplementary search report for the invention first mentioned in the claims. The EPO sends the partial search report to the applicant and, new in the procedure, invites him to pay further search fees for the other inventions. The applicant will receive a communication with a search report and search opinion for each invention for which he has paid. He will be invited to select one of the searched inventions for prosecution, restrict the claims to this invention and respond to the appropriate search opinion. The other inventions can be pursued in divisional applications.

Any further search fee paid under Rule 164(1) will be refunded if the applicant requests so and can convince the EPO that the non-unity opinion was not justified.

The EPO will invite the applicant whether he wants to proceed with the application in view of the search results. On receipt of a positive response the examining division will start the substantive examination of the selected invention.

If the applicant does not want to continue the prosecution of the application, he can withdraw the application or not respond to the invitation from the EPO to confirm that he wants to proceed after the search. The examination fee paid on entry will be refunded, because the examination has not yet started.

4 Searches where the EPO was ISA
If the EPO was ISA, the applicant has to pay normally an examination fee on entry; he does not have to pay a search fee on entry. If the claims, pending after any amendment on entry or in response to the Rule 161 communication, are already searched by the EPO as ISA, the new Rule 164(2) procedure will not be carried out and the examining division will start the substantive examination.

If the claims cover inventions that are not searched by the ISA, the examining division will under the new procedure inform the applicant and invite him to pay a search fee for each such invention. The EPO will send the search results and any objections relating to each invention for which a search fee is paid in an annex to an Article 94(3) or Rule 71(3) communication. They are not sent as a search report, because these searches are not carried out by a search division but by an examining division.

Any search fee paid under Rule 164(2) will be refunded if the applicant requests so and can convince the EPO that the non-unity opinion was not justified.

The applicant will be invited to select one of the searched inventions for prosecution and restrict the claims to this invention. The other inventions can be pursued in divisional applications.

If the applicant does not want to proceed with the application, he can withdraw the application or have it deemed withdrawn by not responding or paying. The examination fee, paid on entry, will not be refunded.

5 Three further issues
a) Neither the amended Rule 164(2) nor the new Guidelines, which also enter into force on 1 November 2014  (currently link here at the time of writing, but this will probably be over-written in due course)  explain when the EPO as designated or elected office considers an invention not to have been searched by the EPO as ISA (see the above section 4). A possible explanation is provided in par. 13 of the Notice from the EPO in OJ EPO 2014 A70, which suggests that an invention is considered as not searched by the EPO as ISA if the invention does not combine with a searched invention or a searched group of inventions to form a single general inventive concept. This interpretation is in line with Rule 137(5).

b) When the EPO has acted as ISA, the applicant must pay the examination fee on entry into the European phase or, if in an exceptional case the publication of the international search report is late, within six months from that publication; the examining division will become responsible for the Euro-PCT application on payment of the examination fee, which is usually on entry (see the above section 4). The moment the fee must be paid and the examining division becomes responsible is ultimately based on the interpretation of Article 153(6) EPC. According to document CA/91/13 of the EPO Administrative Council, par. 30, explaining new Rule 164(4), ‘the term “European search report” is to be understood as “international search report” (ISR) if the EPO acted as (S)ISA’. Since the examining division is responsible for the Rule 164(2) searches, they are therefore regarded as a ‘search incident’ during examination.

When the EPO has not acted as ISA, the Guidelines C-II, 1.2 require that the examination fee also be paid on entry into the European phase or, if late, within six months from the publication of the international search report. The basis is again that the European search report is equated with the international search report. However, in this case the examining division does not become responsible on payment. Instead the search division will first carry out a supplementary search (see OJ EPO 2014 A70 par. 12). Only after a positive response of the applicant on the invitation whether to proceed with the application the examining division will become responsible under Rule 10 EPC. This change of responsibility is only possible if the European search report in Article 153(6) EPC is equated with the supplementary search report.

Hence, the interpretation of Article 153(6) EPC appears to be different for different parts of the procedure. A consistent interpretation of would require either that the examining division is responsible from the moment of payment or a deferral of the obligation to pay till six months after the transmission of the supplementary search report. However, the latter does not match with Rule 70(1) EPC, which counts the six months from publication of the search report, because the supplementary search report is not published.

[This Kat notes that this constitutional issue and dual interpretation of Article 153(6) EPC is not of itself new, but that this oddity is highlighted by new Rule 164 EPC, in particular the fact that the search under Rule 164(1) EPC is carried out by the search division, whereas the superficially similar search under Rule 164(2) EPC is carried out by the examining division.]

c) The EPO has provided two different wordings for the transitional provision for entry into force of the amended Rule 164. The decision of the Administrative Council (OJ EPO 2013, 503) states:

“Rule 164(1) EPC as amended by Article 1 of this decision shall apply to any application for which the supplementary European search report under Article 153(7) EPC has not been drawn up at the date of its entry into force.”

The date of entry into force is 1 November 2014. The Notice from the EPO (OJ EPO 2014 A70, par. 23) has:

“Amended Rule 164(1) EPC applies to any application for which the supplementary European search report under Article 153(7) EPC has not been drawn up by 31 October 2014.”


What is the moment in time that the applicant must check whether or not the supplementary search has been drawn up? There are also two different wordings for the transitional provision of Rule 164(2).  [This Kat thinks that the intention is that if the supplementary European search report is dated 31 October or earlier old rules apply, and if 1 November or later new rules apply, but agrees with Derk that there seems no rationale for the two different wordings and it is not abundantly clear that they mean the same thing.  Is the second wording intended to "correct" the first (which is the legally authoritative wording)?]

Comments from readers are particularly solicited in relation to these three final conundrums.

8 comments:

Anonymous said...

Concerning the three outstanding issues...

a) I think that a Rule 137(5)-like approach is indeed the most likely outcome, but most likely some case law will be required to clarify the issue once and for all

b) I think Art. 153(6) is pretty clear and the "search report" mentioned therein is the ISR. As far as I understand it, the reason why this inconsistency exist is that a long time ago J8/83 held that "Article 16 EPC [now formally R10, although the wording is quite different] applies differently in a case in which a supplementary European search report is required in accordance with Article 157(2)(a) [now Art. 153(7)] EPC [...] Bearing in mind the matters considered above [...], the Board concludes from the language of Article 96(1) EPC [now Rule 70, again with a different wording], from its purpose, and from its context in the other provisions of the EPC, that there is every reason to consider that the reference in Article 96(1) EPC to transmittal of the European search report must be interpreted as including transmittal of a supplementary European search report."

In short, it is not the "search report" in Art. 153(6) the issue, but rather the "search report" in Rule 70, that was judicially extended by the Legal Board of Appeal so as to include also the supplementary search report. This is probably the reason why Rule 164(4) explicitly excludes the applicability of Rules 62 and 70 to searches done under Rule 164(2).

Assuming J8/83 was correctly decided to begin with, it is at least questionable whether its reasoning still holds after one major EPC revision and so many Rule revisions that I cannot be bothered counting. Nevertheless, as J8/83 is in favour of the applicant (as it allows him or her to get the full reimbursement of the examination fee) and because the EPO does not like its Guidelines to be challenged before the Board of Appeals, things are not likely to change.

c) There is no practical difference in the two time limits, as November 1st is a Saturday and the EPO is closed.

Roufousse T. Fairfly said...

Even after several readings of the looming version of Rule 164, I fail to see anything but a return to the regime of Rule 112 EPC 1973, albeit in a rather verbose codification, and the added interplay with Rule 161.

The only practical difference I can detect is that two months are provided in the invitation for the applicant to decide whether to request supplemental searches, instead of the one month indicated on former EPO form 2002 which was sent out until 13 December 2007.

(If you see something I don't, please point it out to me).

An applicant would be generally be nuts to respond to an invitation to pay supplemental fees in the international phase, as he would have to shell out 1875 Euros for each additional search, instead of 1275 Euros should he simply wait for the future invitation under Rule 164 in the regional phase.

Contrary to what you write, I don't see how or why the supplementary search would be performed by the "examining division". Under old Rule 112, technically, the application reverted in a search state, and was allocated to a Search Division, which under "BEST" conditions happens to be the first examiner. Why would it be different under Rule 164? Search and examination are defined in the Convention, and are still separate, no matter how EPO "management" eagerly tries to confuse the two.

It regularly happened under the old regime that an examiner neglected for one reason or another to send out the communication under Rule 112. I estimate the number of such cases in the last years of the original EPC of to be at least in the two digit range. An applicant seeing his case going badly would very occasionally wake up and demand to have get the missing communication. The examiner had no real choice but to grit his teeth, and allow the procedure to restart more or less from scratch on another invention. I hope that the technical implementation for the amended rule will help prevent such errors, but I wouldn't bet much on this to happen.

Anonymous said...

Anecdotally, I think the EPO is becoming more lenient on lack of unity, at least in biotech.

ipFrog said...

Here is the 4th one:
ISA=OEB, inventions A&B in the claims, only A searched during PCT.
I enter in EP phase with claims to B only.
can i go back to invention A after the new supplementary search?

Response from EPO legal division: yes
Feeling: great...the PCT applicant has now an advantage over the EP direct who needs to pay claim fees for 2 inventions on filing while the PCT applicant has more flexibility.

Derk Visser said...

Response to Roufousse T. Fairfly

You are right; under the new Rule 164 an applicant should not pay for further searches for non-unitary inventions in the international phase if he is only interested in these non-unitary invention in Europe, because the further searches are cheaper in the European phase. However, other designated offices where the applicant may want to prosecute his application may treat non-unitary inventions not searched in the international phase in a way different from the EPO under new Rule 164. If they have the same regimen as the EPO under the present Rule 164, it may be advisable to pay further search fees in the international phase.

You state that you don’t see how or why the supplementary search would be performed by the examining division. The blog stated something else. The (partial) supplementary search under Rule 164(1) is carried out by a search division (see Gdlns F-V, 13.2). The searches under Rule 164(2) are not carried out by a search division but by an examining division (see Gdlns F-V, 13.1 ‘during substantive examination’). Moreover, new Rule 164(4) states that R. 62 and R. 70(2) do not apply to the searches under Rule 164(2), emphasising that these searches are not carried out by a search division. The EPO calls searches under Rule 164(2) not ‘supplementary searches’ but ‘search incidents during examination’ (see CA-PL 9-31 par. 31).

Derk Visser said...

Thanks, anonymous, for the clarification of the meaning of “search report” with J8/83.
I have the impression that J8/83 can still be applied to the EPC 2000. The result would be that the European search report mentioned in R. 70(2) (~Art. 96(1) EPC 1973) will be equated with the supplementary European search report drafted for a Euro-PCT application. As a consequence, the applicant will be invited to indicate whether he wishes to proceed further with the application after he has received the supplementary European search report.
Since Art. 153(6) equates the international search report with the European search report, we have the peculiarity that there are two European search reports for one Euro-PCT application.
R. 159(1)(f) on payment of the examination fee on entry refers to R. 70(1). The six-month period of R. 70(1) for payment starts on publication of the European search report. When R. 70(2), relating to the very same search report as R. 70(1), is interpreted to relate to the supplementary European search report, R. 70(1) should also relate to the supplementary European search report. However, this is rather inconvenient, because the supplementary European search report is not published. Hence, we must give the European search report in R. 70(1) and (2) different meanings: R. 70(1) has to relate the international search report, and the examination fee has to be paid on entry into the European phase and not after receipt of the supplementary European search report.
It is surprising that the EPC 2000 has not ironed out these difficulties.

Derk Visser said...

Response to ipFrog

Good to know that your procedure finds approval of the EPO. The re-introduction of the claims relating to A into the application is probably done as amendment under R. 164(2)(b). It would be quite lenient of the EPO to allow introduction of non-unitary claims at this stage of the procedure.

If you do not want to rely on the leniency of the EPO, you could include inventions A&B in the claims on entry. After payment of a search fee under R. 164(2)(a), the EPO will search invention B and you can select invention A if the prospect of invention B is not very good. This procedure is safe in that it relies completely on R. 164(2).

ipFrog said...

Indeed, the reintroduction of invention A is contemplated under R164(2)
The main aim is actually to avoid paying claim fees on A&B upon EP entry

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