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EPO provisional patentability opinion for applications with non-unity

EPO provisional patentability opinion for applications with non-unity

12/05/17

Where the EPO find that a patent application relates to more than one invention (so-called lack of unity) at the search stage, they will issue a partial search report based on the first claimed invention and invite the applicant to pay further search fees if the remaining inventions are to be searched. Currently, the EPO does not provide any views on the patentability of the searched invention at this stage.

If the applicant pays further search fees, the EPO will issue a “final” extended European search report together with a written opinion on patentability of the claims of the first and subsequent searched inventions. Likewise, the applicant may decline to pay any additional search fees, in which case the EPO will issue a “final” extended European search report together with a written opinion on patentability of the claims of the first invention only.

From 1 April 2017 the EPO introduced a new service with an aim to “further improve the quality and transparency of it procedures”.

Under the new procedure, the EPO will provide an opinion on the patentability of the first claimed invention together with the partial European search report. The opinion will be for information only and a reply will not be required. A reply will only be required in response to the “final” extended European search report.

The service will apply to direct filed European applications, for Euro-PCT applications where the international search was not carried out by the EPO acting as international search authority, and international applications for which the EPO acts as the international search authority.

Whilst this new service does not substantially change the EPO’s way of handling non-unity at the search phase, it may prove useful to applicants in deciding how to proceed with applications at the search phase and in particular whether to invest further resources on additional searches.