6.2. Euro-PCT applications

An applicant may pay additional search fees in the international phase if invited to do so by the ISA under Art. 17(3)(a) PCT. Once the application has entered the European phase, R. 164 EPC, as in force from 1 November 2014, allows applicants to obtain, upon payment of a (further) search fee, a search of any invention claimed which was not searched by the EPO in the international phase. Applicants may choose any invention searched by the EPO either in the international phase, in the procedure for supplementary search or in the procedure under R. 164 EPC as a basis for further prosecution of the European phase (see notice from the EPO of 10 June 2014, OJ 2014, A70).

In T 44/19 the board noted that the hub of the first invention had the same function and addressed the same technical problem as the hub of the second invention identified by the objection as to lack of unity raised by the search examiner. Consequently, during the search for the first invention and having due regard to the description and drawings, the search examiner already had to search for a hub according to the second invention. In the particular circumstances of the case, the board found that it was irrelevant whether the examining division correctly considered that there was a lack of unity in the claims. According to R. 164(2) EPC, the examining division may only ask for the payment of an additional search fee if it considers that in the application documents which are to serve as the basis for examination, an invention (or a group of inventions within the meaning of Art. 82 EPC) is claimed which was not searched by the EPO in its capacity as ISA. The communication under R. 164(2)(a) EPC was therefore not justified and the additional search fee should have been refunded by the examining division under R. 164(5) EPC.

The following decisions concerning the former version of R. 164 EPC are still relevant.

In J 3/09, the Legal Board of Appeal confirmed in respect of R. 164 EPC (as then in force) that although the procedure on entry of an application into the European phase where the EPO had acted as the ISA changed with the coming into force of EPC 2000, the responsibility for establishing whether or not the application met the requirements of unity of invention still ultimately rested with the examining division, and the opinion of the EPO acting as the ISA on lack of unity was not final or binding on the examining division. The board observed that the practice of the examining division in this respect remained as before, noting in particular that to the extent that an objection of non-unity raised by the ISA turned out to be unjustified, the applicant was entitled to have the whole subject-matter of their unitary invention searched. The board in T 1285/11 followed this reasoning, adding that the fact that the applicant did not pay further search fees or protest fees in the international phase could not be seen as a tacit agreement with the findings of non-unity of the ISA.

For further decisions concerned with the interpretation and application of R. 164 EPC as in force until 31.10.2014, see CLB,  9th edn. 2019, II.B.6.2.