Here we set out the early stage procedure for European patent applications filed directly at the EPO, including divisional applications. We also set out the practical consequences of this procedure for prosecuting these applications at the EPO. In particular, EPO rules place restrictions on the subject matter that will be searched by the EPO, and so we recommend early review of applications being filed at the EPO to allow appropriate preparation and action to be taken in time, which will be key to effectively managing these applications.
Before the European search
What is the procedure?
Search restrictions applicable to the European search mean that certain requirements must be met before the EPO carries out the search. Subject matter that is not searched in the European search is lost from the application, but may be pursued in a divisional application.
There are three ways in which the EPO will try to restrict its search:
1. Only a single independent claim in each category
The EPO allows only a single independent claim in each category (product, process, apparatus or use), except under certain limited circumstances. Where the EPO considers that this requirement is not met, it will invite the Applicant to indicate which one independent claim for each category should be searched.
The invitation sets a two month time limit for response. This time limit is not extensible and "further processing" is not available. If the Applicant does not reply, the EPO will search only the first independent claim in each category.
It is possible to challenge such an objection, either in reply to the invitation or during examination. If the challenge is successful, the EPO will not limit the search.
2. Incomplete search
Where the EPO considers that the claims are unclear, or too broad for a meaningful search to be carried out, it will invite the Applicant to file a statement indicating the subject matter to be searched.
The invitation sets a two month time limit for response. This time limit is not extensible and "further processing" is not available. If a statement is not filed or is not deemed sufficient, the EPO will either not carry out a search or will search only part of the claimed subject matter.
It is possible to challenge such an objection, either in reply to the invitation or during examination. If the challenge is successful, the EPO will carry out a complete search.
3. Independent consideration of unity of invention
The formal review of the claims at 1 and 2 above is independent of consideration of unity. Where the EPO finds that the claims lack unity, it will carry out a partial search only on the basis of the invention appearing first in the claims. It will also invite the Applicant to pay a further search fee for each further invention that is to be covered by the search.
The invitation sets a two month time limit for response. This time limit is not extensible and "further processing" is not available. The European search report will be drawn up for the invention appearing first in the claims, and for any further invention for which an additional search fee has been paid.
It is not possible to argue against a finding of lack of unity at this stage, although this can be challenged when responding to the European search opinion.
If a divisional application is filed with claims directed to subject matter for which a search fee has already been paid, then the search fee paid for the divisional application will be refunded during prosecution.
What action should Applicants take?
- Review claims before filing the application
- Amend claims if necessary to ensure:
- there is only a single independent claim in each category; and
- that the most important subject matter appears first in the claims so that it is searched automatically, without the need to pay any additional search fees.
Where there are multiple independent claims in a category, consider amending to a single independent claim, such as by combining alternatives in a single claim or making one claim dependent on another.
After the European search
What is the procedure?
- Mandatory response to objections raised by the EPO during the European search
The EPO invites the Applicant to file comments and/or amendments addressing objections raised by the EPO in the European search opinion which accompanies the European search report (together called the extended European search report).
The time limit for response is the six month time limit following publication of the European search report, either when paying the examination fee or when indicating that the application is to proceed further if the examination fee was paid earlier. This time limit is not extensible. If comments and/or amendments addressing the objections are not filed in time, the application will be deemed to be withdrawn, although more time for filing a response is available by using "further processing" at additional cost.
If there are no objections in the European search opinion then a response is not required.
- Last opportunity for voluntary amendment
This six month time limit for response is also the last opportunity to file voluntary amendments.
After this time, the Applicant no longer has the right to file voluntary amendments, with any later-filed amendments requiring the consent of the Examining Division. With the EPO's ongoing aim to make examination of applications more efficient, we may expect Examining Divisions to be less willing to consent to later voluntary amendments. Note that amended claims filed at this stage may not relate to unsearched subject matter.
- Amendments and their basis in the application as filed must be identified
When filing amendments, the Applicant must identify them and indicate the basis for them in the application as filed. If the EPO considers that this requirement is not met, the EPO may invite the Applicant to correct the deficiency.
The invitation sets a one month time limit for response. This time limit is not extensible. If the deficiency is not corrected in time, the application will be deemed to be withdrawn, although more time for filing a response is available by using "further processing" at additional cost.
What action should Applicants take?
- We recommend early review of the EPO's objections in the European search opinion. Voluntary amendments should be considered at the same time.
- Comments and/or amendments for response to the objections (and/or of voluntary amendments) can then be prepared in good time before expiry of the six month time limit for responding to the search opinion.
If the Examining Division believes that the application does not satisfy the requirements as to unity of invention, and if the non-unity objection is not overcome by argument in examination, the application must be restricted to a searched invention only. The further invention(s) can be pursued in one or more divisional applications.
A divisional application can be filed on any pending European patent application, i.e. at any time up to the day before grant, withdrawal, deemed withdrawal or refusal of the present application.
A divisional application may only be filed for subject matter which does not extend beyond the content of the parent application as filed.
Where a divisional application is filed directed to claims for which a search fee has already been paid, the search fee paid for the divisional application will be refunded after filing.
If you would like further advice about how the rules may affect you or particular applications, please contact us.
This information is simplified and must not be taken as a definitive statement of the law or practice.