6.2 Rule 164(2) − No examination of multiple inventions

An invitation to pay further search fees under Rule 164(2) will be issued only if any claimed invention or group of inventions within the meaning of Art. 82 is identified that was not searched by the EPO in its capacity as ISA or SISA.

This means that, if the claims on entry into the European phase belong to the same invention under Art. 82 as that for which search was limited or for which a declaration of no search under Art. 17(2)(a) PCT was issued by the EPO as (S)ISA, no invitation under Rule 164(2) will be issued. Applicants may, however, proceed as set out in A‑XIV, 3 to obtain an additional search in examination at no extra cost (C‑IV, 7.3).

The invitation under Rule 164(2) can be combined with or followed by an invitation under Rule 62a or Rule 63. A further search fee must be paid within the period set in the invitation. This period is not extendable. 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):

In cases where protection is sought for an invention not covered by the (S)ISR or the supplementary European search report, or by a search carried out under Rule 164(2), because the (further) search fee due was not paid, the examining division must invite the applicant to limit the application to one invention covered by one of these searches. The procedure under Rule 164(2) is set out in detail in C‑III, 3.1. If the applicant has paid a further search fee following an invitation under Rule 164(2) and the examining division finds, either of its own motion or in view of comments made by the applicant, that the invitation under Rule 164(2) was not justified, the further search fee will be refunded (Rule 164(5)) (A‑X, 10.2.2; C‑III, 3.1).

Only one invention will be examined in the European phase, even if, under PCT Chapter II, the EPO as IPEA may have examined multiple inventions on payment of further fees (unless, exceptionally, the examiner chose not to invite the applicant to pay further fees).

If after receipt of the (supplementary) European search report or, where applicable, after a communication under Rule 164(2)(b) the applicant files amended claims relating to an invention which differs from any of the originally claimed inventions and which does not combine with these inventions to form a single inventive concept, an objection under Rule 137(5) is raised (F‑V, 7; H‑IV, 4).