The EPO is revising its Guidelines for Examination and these are already available on the EPO website (I know, be still your beating hearts). This early publication of the Guidelines can be accessed here. The EPO has thoughtfully included a Track Changes option which can be toggled on and off via a check box in the top right of the screen. Once switched on additions appear on a green background and deletions in red strikethrough font.
One of the more notable changes is to the EPO’s searching practice on applications entering the regional phase.
Currently the Guidelines state (at B-VII, 2.3):
When in a supplementary European search following an international (PCT) search a problem of unity of invention arises, the supplementary European search report will be based on the invention or group of inventions first mentioned in the claims serving as basis for the supplementary European search, independently of the findings of the International Searching Authority as regards unity of invention.
From the 1 November however it will be possible to get all inventions searched regardless of who was the ISA. The revised section reads as follows:
When in a supplementary European search following an international (PCT) search a problem of unity of invention arises, a partial
thesupplementary European search report will beis drawn up basedon the invention or group of inventions first mentioned in the claims serving as basis for the supplementary European search (Rule 164(1)(a)), independently of the findings of the International Searching Authority as regards unity of invention. Together with this partial search report, the applicant receives an invitation to pay further search fees for each invention other than the one first mentioned in the claims (Rule 164(1)(b)), i.e. the same procedure is followed as for the non-unity invitation for EP direct applications under Rule 64(1) (see B‑VII, 1.2).
So, for cases where there’s a lack of unity and the EPO was not the ISA applicants will receive invitations to pay further search fees within a two month period.
For cases where there’s a lack of unity and the EPO was the ISA then under new rule 164(2) EPC which is to come into force on 1 November 2014, applicants will again be invited to pay additional search fees within a 2 month period, the results of which will be delivered either in the first exam report or the rule 71(3) Communication.
The revised EPO Guidelines will come into force on 1 November 2014. Until then the current Guidelines remain valid.
Mark Richardson 6 October 2014