For Euro-PCT applications where the EPO acted as ISA or as SISA, the examining division under Rule 164(2) assesses the application documents upon expiry of the six-month time limit set in the communication under Rule 161 and Rule 162. For any claimed invention or group of inventions within the meaning of Art. 82 which was not searched by the EPO in its capacity as ISA or SISA, the examining division issues an invitation to pay search fees.
The application documents as amended may contain claims directed to a non-searched invention in situations other than where the application documents which are to serve as the basis for examination do not meet the requirement of unity of invention.
For instance, the amended application may contain just one invention, but it may be an invention that was claimed but not searched by the EPO as (S)ISA in the international phase. In this case, there is no non-unity objection for this set of claims and the reasoning in the invitation needs only to refer to the non-unity objection in the WO‑ISA and to the fact that no additional fee was paid for this invention during the international phase.
It may well be that an invention in the application documents was not even claimed in the application documents that served as the basis for the procedure in the international phase and has been imported from the description (see F‑V, 7.1(iv)). In such cases an invitation to pay search fees under Rule 164(2) for any non-searched invention is to be issued by the examining division, irrespective of whether lack of unity persists in the claims. The invitation under Rule 164(2) must state that this is a new invention not searched in the international phase, and the reasons therefor. If other inventions are also present in the claims of such a case, which were also not searched (but were claimed in the PCT phase), in the same invitation the applicant must also be invited to pay further search fees in respect of those inventions. In assessing whether or not subject-matter present in amended claims constitutes a previously unclaimed invention imported from the description (for which an invitation under Rule 164(2) is to be sent), the principles laid down for assessing compliance with Rule 137(5) (see in H‑II, 6.2) are to be taken into account.
The application documents forming the basis for the European phase may also cover inventions or groups of inventions which were not searched in the (supplementary) international search report as a result of the procedure for erroneously filed elements under Rule 20.5bis PCT (see C‑III, 1.3). In this case too, an invitation to pay search fees under Rule 164(2) EPC is to be issued by the examining division.
The invitation under Rule 164(2) must be sent before any communication according to Art. 94(3). It is to be noted that for Rule 164(2) to apply, the claims must be sufficiently clear to allow the identification of a non-searched invention by which the procedure under Rule 164(2) is triggered. If the claims are so unclear that a non-searched invention cannot be identified, the first action must be issuance of a communication under Art. 94(3) setting out the objections under Art. 84. Should it turn out later in the procedure that amended claims are indeed directed to a non-searched invention, the applicant must file a divisional application for any such subject-matter. Recourse to Rule 164(2) is not provided for if, as a result of further amendments or clarification, (further) non-searched inventions are identified, since the procedure under Rule 164(2) applies to the application documents as submitted by the applicant as the basis for examination.
If auxiliary requests are submitted before a search under Rule 164(2) is performed, only the main request is taken into account for the purpose of the search (notwithstanding the exceptions relating to Rule 62a or Rule 63 cases where main and auxiliary requests are both considered at the search stage, see B‑VIII, 3.2.2 and B-VIII, 4.2.2).
If any search fee(s) is/are paid in time, the results of the search(es) are communicated to the applicant as an annex to a communication under Art. 94(3) and Rule 71(1) and Rule 71(2) or under Rule 71(3), as set out in Rule 164(2)(b). This annex is entitled "Search result according to Rule 164(2)".
If the applicant pays the search fees in due time under Rule 164(2) and at the same time files a new set of claims, the search will be carried out and the written opinion issued for the claims on file upon expiry of the period under Rule 161 for which the invitation to pay has been sent and the requested fees have been paid. The amended documents may, however, informally be taken into account by the examiner carrying out the search, where this appears appropriate. Applicants will have the opportunity to file amendments of their own volition after having received the results of the search under Rule 164(2) annexed to the communication according to Art. 94(3) (see H‑II, 2.3).
If search fees are not paid in due time under Rule 164(2), a communication under Art. 94(3) and Rule 71(1) and Rule 71(2) or under Rule 71(3) will be issued and the examining division will require deletion from the claims of any non-searched subject-matter that was not searched either because a search fee under Rule 164(2) was not paid (see H‑II, 7) or for a different reason (see H‑II, 6). Before the patent is granted, this subject-matter should be either deleted from the description and drawings or indicated as not forming part of the claimed invention (see F‑IV, 4.3(iii)).
A communication under Rule 164(2)(b) deals with all objections for each of the inventions searched in accordance with Rule 164(2). For claims relating to inventions already searched by the EPO in the international phase which have been amended but still lack unity, it is sufficient to argue in detail why lack of unity is still present. The communication, where appropriate, further requests the applicant to limit the application to a single searched invention (see Rule 164(2)(c)).
It follows from Rule 164(2)(b) and Rule 164(2)(c) that the special procedure under Rule 164(2) as set out in H‑II, 2.3 ends upon expiry of the time limit set in the communication issued under paragraph Rule 164(2)(b). This means that the applicants' right to make amendments of their own volition ends upon expiry of the time limit set in that communication.
Furthermore, the special procedure as set out in F‑V, 7.1(iv), which exempts amendments from the requirements of Rule 137(5), first sentence, ends upon expiry of the time limit under Rule 161(1). Such amendments will result in an invitation under Rule 164(2)(a) and allow the applicant to obtain a search of unsearched subject matter referred to in Rule 137(5). However, any amendments submitted after expiry of the time limit under Rule 161(1) are subject to the requirements of Rule 137(5), first sentence (see H‑II, 6.2).
The EPO's obligations under Rule 164(2) are fulfilled and the applicant's rights under this rule are exhausted once a single communication under Rule 164(2) has been sent. It follows that in cases of cascading non-unity no (further) invitation under Rule 164(2) is sent. The same applies if claims are added or existing claims amended so that they relate to non-searched inventions in the course of the examination procedure.
Exceptional cases may arise where the following sequence of events has occurred in the international phase:
In the above case, the EPO will invite the applicant to pay search fees for any such unsearched sub-inventions in the claims which are to form the basis for examination on expiry of the six-month period under Rule 161(1), in accordance with Rule 164(2).
Where the EPO was the SISA in accordance with Rule 45bis.9 PCT, it may make a finding of a lack of unity of the international application according to Rule 45bis.6(a) PCT. However, in the procedure before the SISA, the applicant cannot pay additional supplementary international search fees, and the supplementary international search report will be directed only to the invention or unitary group of inventions first mentioned in the claims (Rule 45bis.6(a) PCT). Where such an application contains unsearched inventions in the claims which are to form the basis for examination on expiry of the six-month period under Rule 161(1), a communication according to Rule 164(2) is issued, allowing the applicant to have these inventions searched upon payment of search fees and to pursue one of them in the examination proceedings.
Rule 164(2)(b) provides for a right to amend the application in response to the results of any search under Rule 164(2). This means that applicants may make amendments of their own volition once in response to the communication under Art. 94(3) to which the search results under Rule 164(2) are annexed (H‑II, 2.3).