European regional phase entry - Early Stage Procedure - EPO is not ISA

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Here we set out the early stage procedure for international (PCT) applications entering the regional phase at the EPO where the international search was carried out by an authority other than the EPO.  We also set out the practical consequences of this procedure for prosecuting these applications at the EPO.

For the early stage procedure on international applications where the EPO acted as the ISA, or for European patent applications filed directly at the EPO, please see our separate information sheets.

What is the procedure?

Where the EPO did not act as the ISA for an international application it will draw up a supplementary European search report upon entry into the regional phase.

Soon after an application enters the regional phase the EPO issue a "Communication under Rules 161 and 162 EPC".  In response to this communication, or on entry to the regional phase, the Applicant has the option to take some or all of the following actions:

• File voluntary amendments to the application, in particular to the claims.
• Pay any excess claims fees due.

The Rule 161/162 communication sets a six month time limit for response.  This time limit is not extensible.

The claims on file at the EPO after expiry of the six month time limit will be those which serve as the basis for the supplementary search and determine how many claims fees are payable at this time.

If the Applicant prefers not to have the supplementary search delayed by this six month time limit, the Applicant may expressly waive the right to this communication on entering the regional phase, provided any claims fees due are paid on entering the regional phase.

Before the supplementary European search

Search restrictions applicable to the supplementary European search mean that certain requirements must be met before the EPO carries out the search.  Subject matter that is not searched in the supplementary 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 – claims too broad or unclear

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.

This applies even if there was no lack of unity objection in the international phase, and the lack of unity objection is raised for the first time by the EPO at this stage.

The EPO will 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 supplementary European search report will then 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.

4.   Payment of excess claims fees due

The claims on file at the EPO at expiry of the six month time limit set by the Rule 161/162 communication determine how many claims fees are payable at this time. Claims fees are payable where there are more than 15 claims.

Excess claims fees are payable for the 16th and each subsequent claim. A higher claims fee is payable in respect of the 51st and subsequent claims.

Where a claims fee is not paid in due time, the claim concerned shall be deemed to be abandoned.  Features of a claim deemed to be abandoned and which are not otherwise to be found in the description or drawings cannot subsequently be reintroduced into the application and, in particular, into the claims.

Where an amended claim set is filed which reduces the number of claims, any claims fees which have been paid on entry into the regional phase will be refunded.

What action should Applicants take?

• Review claims before the search
• Amend claims if necessary to ensure:
  (i) there is only a single independent claim in each category; and
  (ii) 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
• Amend claims if necessary to reduce claim number to avoid/reduce payment of claims fees

After the supplementary European search

• Mandatory response to objections raised by the EPO during the supplementary 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 supplementary European search report (together called the extended European search report).

The time limit for response is the six month time limit set for the Applicant to indicate that the application is to proceed further.  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.

Where the EPO identified a lack of unity, the Applicant must now amend the claims to refer only to one of the searched inventions.  The further invention(s) may be pursued in one or more divisional application(s).  If a divisional application is filed for an invention for which a search fee was paid in the present application, the search fee may be refunded during prosecution of the divisional.

When responding to the European search opinion it is possible to argue against a finding of lack of unity.  If successful, then the EPO will conduct a further search if necessary, without charge.

If the lack of unity finding is maintained by the Examining Division then it will not be possible to have unsearched inventions examined in the present application and a divisional application will be required.

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 become less willing to consent to later voluntary amendments.  Note that amended claims filed at this stage may not relate to unsearched subject matter.

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 voluntary amendments) can then be prepared in good time before expiry of the six month time limit for responding to the search opinion

If you would like further advice about how the rules may affect you or particular applications, please contact us.

Download flowchart - European regional phase entry - Early Stage Procedure - EPO is NOT ISA

This information is simplified and must not be taken as a definitive statement of the law or practice.