On November 1, 2014, a new Rule 164 EPC will enter into force. Under the new rule, an applicant of an international patent application has a second opportunity to pay the requested additional search fee(s) for an EP application based on a PCT application which is found to contain more than one invention. This leads to the question, when to pay the additional search fees.

Consider the following situation:  A European patent application containing more than one invention is based on a preceding international patent application (PCT application) which was only partially searched by the International Searching Authority due to non-payment of one or more additionally requested search fees. Under the present rules of the EPC, such a European patent application cannot be further pursued based on claims directed to subject matter that was not searched in the international phase. Presently, such subject matter can only be further pursued at the EPO by filing one or more (costly) divisional applications.

As of November 1, 2014, the situation will change due to an amendment of Rule 164 EPC. The full text of the amended rule can be found here. As a result of the change, the applicant is provided upon EP entry with a second opportunity to pay one or more additional search fees so that all inventions of the application can be searched and are then available for a subsequent selection which invention is to be further prosecuted at the EPO.

The following transitional regime is envisaged:

  • regarding applications, where the EPO was not the International Searching Authority, the amended rule shall apply to any application for which a supplementary European search report under Art. 153 (7) EPC has not yet been drawn up at the date of entry into force (November 1, 2014).

  • regarding applications, where the EPO was the International Searching Authority so that the supplementary European search report is dispensed with, the amended rule will apply to all such applications for which the first examination report has not been drawn up at the date of entry into force (November 1, 2014). 

Thus, amended Rule 164 EPC, even though it enters into force only on November 1, already now leads to the following question: Is it preferable to pay an additional search fee in the proceedings before the International Searching Authority or  should such a payment be postponed until the beginning of the regional phase at the EPO (i.e. EP entry) ?

The advantages for an early payment of the additional search fee(s) in the international phase are as follows:

  • At the earliest possible point in time, there is a complete feedback on the patentability of all inventions contained in the application. The reason is that searches in the international phase enjoy a high priority. Therefore, an additional search will typically still be performed during the international phase and not lead to an additional time delay.
    By contrast, if one or more additional search(es) are not requested before the EPO acting as International Searching Authority but only in the EP phase, the results thereof are provided together with the first examination report, which may take a varying amount of time. Even under the present rules, the issuance of the first examination report sometimes occurs only after several years.

  • An early feedback on all inventions is also helpful for a decision, whether and how to pursue the application in other countries, e.g. the US, Japan, China or Korea. Moreover, if the EPO serves as International Search Authority, a complete search performed in the international phase leads to fee reductions in some non-European countries. For example in China there is a reduction of 20% of the examination fee, if the search report is prepared by the EPO. Similarly, the Korean patent office applies a 10% reduction of the examination fee for an application having been searched by the EPO (the numbers are based on information available from WIPO).

The advantages of a later payment of the search fees only in the EP phase are as follows:

  • The additional search fee is at present considerably lower than in the international phase (€ 1285 compared to € 1875).

  • In the EP phase, a refund of the additional search fee can be requested, if applicant considers the lack of unity objection not to be justified. If the refund is rejected by the Examining division, this decision is subject to appeal with a Board of Appeal of the EPO. By contrast, paying under protest in the international phase leads only to an administrative review which is rarely successful.
    However, the appeal fee of € 1860 has to be paid for such an appeal which is only reimbursed if the appeal is allowed and the reimbursement is considered equitable due to a substantial procedural violation, the latter requirement being rarely fulfilled. Accordingly, such an appeal makes only sense if there are several inventions incorrectly identified by the EPO and therefore several search fees were incorrectly requested.

If the EPO was not the International Searching Authority, the applicant can pay additional search fees in the framework of the supplementary search. However, he has to be aware that the supplementary European search report enjoys a low priority in the examiner’s backlog in relation to his other tasks (European searches, examination and oppositions). This leads to substantial delays in issuing the supplementary European search report in technical areas (especially IT) with high backlogs. However, this may be compensated by filing a request for accelerated search. Applicants not interested in quick examination can have an effect similar to deferred examination. If the applicant decides, after receipt of the supplementary search report, not to proceed with the application, the examination fee is refunded in full.

Summarizing the above, it might be meaningful to pay the additional fees in the international phase, if the lack of unity objection seems to be justified AND it is known that the identified inventions are of sufficient interest for the applicant. Conversely, if the lack of unity objection is clearly not justified AND / OR the further inventions appear – at least at the point of time of the international phase – to be less important, it might be preferable not to pay the fees during the international phase but to postpone the decision until EP entry. At this stage, there might be more information available, which allows to decide whether the value of the further inventions justify the payment of the additional search fee(s).

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