Legal framework
If the EPO as International Searching Authority considers that a PCT application lacks unity, it invites the applicant to pay additional international search fees. Under PCT Rule 40.1, the invitation must specify the reasons for non-unity and invite payment of the additional fees within one month from the date of the invitation. Under PCT Rule 40.2(c), the applicant may pay the additional fees under protest, but the protest must be accompanied by a reasoned statement. The protest may also be subject to payment of a protest fee under PCT Rule 40.2(e).
For the EPO as ISA, the Euro-PCT Guide confirms that an additional search fee may be paid under protest and that, where additional fees are paid under protest and the protest fee is duly paid, the protest is referred to a review panel. See Euro-PCT Guide 3.3.020–3.3.022.
In the European phase, Article 153(7) EPC provides for a supplementary European search report for Euro-PCT applications, but the Administrative Council has dispensed with this report where the international search report was drawn up by the EPO. However, this does not mean that there is no possibility of a further search in the European phase. Since the amendment of Rule 164 EPC, if the supplementary European search report is dispensed with and the examining division considers that an unsearched invention is claimed in the documents forming the basis for examination, it must inform the applicant that a search will be performed for any such invention for which a search fee is paid within two months: Rule 164(2)(a) EPC.
Statement a)
False.
The applicant cannot obtain a full search merely by filing a free protest.
A protest under PCT Rule 40.2(c) is possible only in connection with payment of the additional search fees. The protest must be accompanied by a reasoned statement explaining why the application is unitary or why the amount of the required additional fees is excessive. In addition, the EPO as ISA may require payment of a protest fee under PCT Rule 40.2(e) and Rule 158(3) EPC.
Statement b)
True.
The applicant may pay one additional international search fee for the third invention. The EPO PCT Guidelines expressly recognise that, in response to the invitation, applicants may pay some or all of the additional fees. See PCT-EPO Guidelines B-VII, 6.3.
If the third invention is searched in the international phase, it is a searched invention. In the European phase, the applicant may then limit the application to that searched third invention. Rule 164(2)(c) EPC provides that, where appropriate, the applicant is invited to limit the application to one invention for which a search report was drawn up by the EPO as ISA or for which a search was performed under Rule 164(2)(a) EPC.
Statement c)
True.
The applicant may ignore the international invitation and later file a European divisional application directed to the third invention, provided the third invention was disclosed in the PCT application as filed and the Euro-PCT application is pending when the divisional is filed.
Under Rule 36(1) EPC, the applicant may file a divisional application relating to any pending earlier European patent application. Under Article 76(1) EPC, the divisional may be filed only for subject-matter which does not extend beyond the content of the earlier application as filed.
This option is consistent with G 2/92, which prevents pursuing unsearched non-unitary subject-matter in the same application without the required search fee being paid, but does not prevent the filing of a divisional for disclosed subject-matter.
Statement d)
True, with a qualification.
It is correct that no supplementary European search report is drawn up where the EPO already acted as ISA. This follows from Article 153(7) EPC and the Administrative Council decision dispensing with the supplementary European search report in such cases.
However, Rule 164(2) EPC provides a separate mechanism. If, in the European phase, the application documents forming the basis for examination claim an invention that was not searched by the EPO as ISA, the examining division informs the applicant that a search will be performed for any such invention for which a search fee is paid within two months. The Guidelines confirm that a communication under Rule 164(2) is issued allowing the applicant to have unsearched inventions searched on payment of search fees and to pursue one of them in examination: Guidelines C-III, 3.1.
Thus, if the applicant ignores the international invitation but keeps or introduces claims to the third invention as the basis for European examination, the applicant will receive an invitation under Rule 164(2) EPC to pay a search fee for that unsearched invention.
Exam tip
For Euro-PCT non-unity, distinguish three routes. First, the applicant may pay additional international search fees, possibly under protest. Second, if the desired invention was not searched internationally and is still claimed in the European phase, Rule 164(2) EPC may give a further opportunity to pay for a search. Third, a divisional application remains possible for subject-matter disclosed in the original application. Do not rely on the old pre-2014 rule that unsearched inventions in a Euro-PCT application where the EPO was ISA could only be pursued by divisional.
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