5.1 Non-unity − Rule 164(1)

If 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, applicants are invited under Rule 164(1)(b) to pay a further search fee for each invention other than the first invention mentioned in the claims. If they wish to pay further search fees in response to the invitation under Rule 164(1)(b), they must do so within the time limit of two months set in the invitation. This period cannot be extended. It is also excluded from further processing under Rule 135(2).

Where applicants use automatic debiting, all search fees to be paid under Rule 164 EPC will be automatically debited on the last day of the two-month period set in the invitation. If they do not wish to pay these fees, or wish to pay only some of them, they must therefore notify the EPO accordingly (ADA, Annex A.1, point 4, and Annex A.2, items I and I.2):

Together with the invitation to pay further search fees, a partial supplementary European search report is transmitted on the invention or group of inventions first mentioned in the claims (Rule 164(1)(a)) (OJ EPO 2017, A20).

On expiry of the two-month time limit for paying further search fees in response to the invitation under Rule 164(1)(b), the supplementary European search report is drawn up for the parts of the application relating to inventions for which search fees have been paid in accordance with Rule 164(1)(c).

Although the EPO is in no way bound by the opinion of the (S)ISA on the issue of whether the application meets the requirement of unity, the EPO will in many cases share any finding of lack of unity, given that the practices of the (S)ISAs are based on the same guidelines, i.e. Chapter 10 of the ISPE Guidelines. Where the (S)ISA considered that the requirement of unity was not met, the applicant is therefore advised to amend the application before expiry of the period under Rule 161(2) in such a way that the invention on which they wish the supplementary European search and the examination to be based is the one first mentioned in the claims. This ensures that, if the EPO agrees with the (S)ISA's finding of lack of unity, this invention will then be searched on the basis of the search fee paid under Rule 159(1)(e), without the need to pay any additional search fees under Rule 164(1), which do not qualify for a fee reduction under Art. 153(7) (A‑XIII, 6).

If an applicant has paid a further search fee following an invitation under Rule 164(1) and the examining division finds, on request, that this was not justified, the further search fee will be refunded (Rule 164(5)) (A‑X, 10.2.2; C‑III, 3.1).

In response 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 proceedings (A‑XIV, 6; C‑III, 3.2). For the other inventions, the applicant may file divisional applications.