PCT and EPO Search Fees; Unity of Invention (Part 2)

Remedies that may fix search limitations

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Part 1 discussing search limitation scenarios

After Part 1 on “PCT and EPO Search Fees; Unity of Invention” discussed the scenarios that may result in a limited search, this Part 2 discusses potential remedies after having encountered a limited search. Although it may be expensive and sometimes cost-prohibitive for the Applicant to fix the problem of a limited search, the good thing is that it at least can be fixed in most instances. Depending on which Patent Office and in which specific proceedings the search limitations happened (e.g. National/Regional patent prosecution compared to International Phase), typical remedies are:

1) Limit the claims to the searched subject matter

2) Pay additional search fees

3) File amended claims with entry into a national/regional phase based on PCT

4) File a Divisional Patent Application

1) Limit the claims to the searched subject matter

Other than generating some minor costs for some claim amendments, this is the most cost effective way to react on search limitations. When having several sets of claims each having an independent claim and dependent claims, it is a good preventive measure to list the claim set(s) first in the numerical sequence that is/are believed to be the most relevant. In many instances, Patent Offices just search the first set or sets of claims in the numerical sequence and raise their rejection of searching other claim sets just after having carried out the partial search for only one or some of the claim sets and sending the “partial” Search Report. In other words, no invitation to choose a certain claim set is provided prior to performing the partial search when a Patent Office determines that the Unity of Invention requirement is not fulfilled. If the claim searched in the partial search are not the most important claims, getting the more desired claim set searched is at that point either impossible in the same proceedings or requires paying additional search fees, should such latter option be available.

2) Pay additional search fees

Although additional search fee payment options do not apply before all Patent Offices and in all proceedings, as of right, this option exists for International Patent Applications under the Patent Cooperation Treaty (PCT), so-called PCT-Applications, under Rule 40.1 PCT, see http://www.wipo.int/pct/en/texts/rules/r40.htm#_40. When choosing to forego the additional search fee payment option in the International (“PCT”) phase, additional search fee options may still exist later in the national/regional phases, depending on the International Searching Authority (ISA) in the PCT phase and further depending on the national/regional phase Patent Office. For instance, if the ISA was not EP in the PCT phase, the EPO conducts a Supplementary European Search. If a Unity of Invention rejection is raised in the Supplementary European Search phase, since November 1, 2014, a Partial Supplementary European Search Report is established, covering the first set(s) of claims in numerical sequence that are found by the EPO to be in line with the Unity of Invention requirement, and an invitation to pay additional Supplementary European Search fees is sent, see Rule 164 EPC at http://www.epo.org/law-practice/legal-texts/html/epc/2016/e/r164.html and EPO Guidelines for Examination at  http://www.epo.org/law-practice/legal-texts/html/guidelines/e/h_ii_7_4_2.htm. Caveat: If no Supplementary European Search is conducted in the regional phase before the EPO, for instance since the ISA was EP in the PCT phase, no additional invitation to pay additional search fees in the regional phase before the EPO is made, see for instance EPO Guidelines for Examination at http://www.epo.org/law-practice/legal-texts/html/guidelines/e/h_ii_7_4_1.htm. In this case it is particularly important to make sure that the claims that should be pursued in the regional phase before the EPO were searched in the PCT phase.

3) File amended claims with entry into a national/regional phase based on PCT

The Applicant of a PCT application is guaranteed an opportunity to amend the claims, see for instance PCT Applicant’s Guide – National Phase, paragraph 6.013 http://www.wipo.int/pct/guide/en/gdvol2/pdf/gdvol2.pdf. Specifically when a national phase patent office does not rely on the International Search and therefore conducts a Supplementary Search, such as the EPO conducting a Supplementary European Search in case of most (but not all!) International Searching Authorities ISA, claims can be amended prior to the Supplementary Search so that this search then covers the claims the Applicant chooses to pursue. For these claim amendments, the Applicant should stay within the scope of the original disclosure since otherwise the search might be refused for the reason of extending the content of the application beyond the content of the application as filed, in case of the EPO see for instance Article 123 (2) EPC http://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar123.html.

4) File a Divisional Patent Application

In most jurisdictions, Divisional Applications can be filed as long as the parent application is pending, and are treated as a form of direct patent application with a respective Patent Office, claiming the priority date and the filing date of the parent application. Divisional Applications are typically limited to the disclosure of the parent application, i.e. no new matter can be added that extends beyond the disclosure of the parent application. Consequently, the claims of the Divisional Application need to stay within the scope of the original disclosure since otherwise the search might be refused for the reason of extending beyond the content of the parent application as filed. Summarizing, the Divisional Application has the same priority date and filing date and the same disclosure as the Parent Application, but other than that is typically treated as completely independent application. Consequently, a completely new procedure starts for the Divisional Application, also meaning that a new search is started for the new claims of the Divisional Application. As far as the claims of the Divisional Application are partially overlapping with the claims of a Parent Application, sometimes a partial refund of the search fee can be obtained, but in any case, the full search fee needs to be paid upfront. A partial refund is discretionary.

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Part 1 discussing search limitation scenarios

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