New search procedure at EPO for applications which lack unity

New search procedure at EPO for applications which lack unity

The EPO has recently changed its practice relating to patent applications containing more than one inventive concept (lack of unity according to the EPO Search Division). Applicants already receive a partial search report on the first claimed invention and an invitation to pay further search fees for any other inventions to be searched. The EPO will then conduct any further searches for which a search fee has been paid and issue an Extended European Search Report including a written opinion on patentability in view of the documents found in the search.

As of 1 April 2017, additional information will be provided to the applicant at an earlier stage in proceedings. The notice informing the applicant of a finding of lack of unity will be accompanied by the partial search results as well as a provisional opinion on the patentability of the first inventive concept mentioned in the claims. This change will provide applicants with information about the patentability of their first invention at the time when they need to make a decision whether to pay additional search fees for any of the other inventions. 

The new procedure will apply to direct European applications, and to international (PCT) applications for which a search is conducted by the EPO (as international search authority, and as elected/designated office). The new provisional opinion will be provided for information only, and no response is required from the applicant. In accordance with previous practice, a reply only needs to be filed in response to the extended European Search Report.   

At first glance, the new procedure appears to be a relatively minor change, but it may prove very helpful to applicants to have the additional information available when making crucial decisions about which inventions to pursue.

The official announcement of the change can be viewed here.

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