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Guide for applicants, Part 2: PCT procedure before the EPO (Euro-PCT Guide)

 
 
Supplementary European search to be performed: the EPO wasdid not act as (S)ISA
648
If after entry into the European phase aIf the application documents which are to serve as the basis for the supplementary European search do not comply with the requirement of unity of invention, the applicant is invited under Rule 164(1)(b) EPC to pay a further search fee for each invention other than the first invention mentioned in the claims. If the applicant wishes to pay further search fees in response to the invitation under Rule 164(1)(b) EPC, he must do so within the time limit of two months set in the invitation.
649
Together with the invitation, a partial supplementary European search is to be performed (EPO was not ISA/SISA), it will be carried out onlyreport is drawn up on the invention or group of inventions first mentioned in the claims (as possibly amended upon entry into the European phase), regardless of whether an ISR was drawn up in respect of that invention in the international phase and regardless of any earlier findings as to unity of invention in the international phase.
650
The supplementary European search report is then drawn up for the parts of the application relating to inventions for which search fees have been paid. In reply to the accompanying search opinion, the applicant must select, from all inventions searched by the EPO, a single invention to be prosecuted in the European grant procedure.
651
Although the EPO is in no way bound by the opinion of the ISA on the questionissue of whether the application meets the requirement of unity, the EPO will in many cases share that opinion, given the fact that the practices of the ISAs are based on the same Guidelines (Chapter 10 of the ISPE Guidelines, in many cases share that opinion.). Therefore, where the (S)ISA/SISA considered the requirement of unity not to be met, the applicant is advised to amend the application in due time (i.e. before expiry of the period under Rule 161(2) EPC) in such a way that the invention on which the applicant wishes the supplementary European search and the examination to be based, is that first mentioned in the claims, since if the EPO agrees with this lack of unity, this invention will then be searched on the basis of the search fee paid according to Rule 159(1)(e) EPC, without the need to pay any additional search fees according to Rule 164(1) EPC, which do not qualify for a fee reduction according to Article 153(7) EPC.
652
If a supplementary European search report is to be drawn up, Together with the partial search report, the applicant receives an invitation to pay a further search fee for each invention that was the subject ofother than the supplementary European search is the only invention that can be examined (see points 648-649).first mentioned in the claims. If the applicant wishes to pay further search fees in response to an invitation under Rule 164(1)(b) EPC, he must do so within the period of two months set in the invitation. This period is excluded from further processing under Rule 135(2) EPCa different invention to be examined he will have to file a divisional application.
 
Procedure under Rule 164 EPC as from 1 November 2014
654
Under amended Rule 164 EPC it will be possible for the applicant to pay, within a period of two months, one or morepay further search fees in respect of any unsearched inventions claimed upon entry intoresponse to an invitation under Rule 164(1)(b) EPC, he must do so within the period of two months set in the European phase in order for these to be covered by a further search. Thereafter, the applicant may select any invention searched by the EPO for invitation. This period is excluded from further prosecution of the application. This option is available both if a processing under Rule 135(2) EPC.