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A tricky European patent question

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

A friend of the IPKat has been pondering a particularly tricky question relating to European patent law, which has so far eluded a straightforward answer, even from the EPO. Any trade mark practitioners can look away now.

The question relates to what happens when an international application is objected to by the EPO acting as the international search authority (ISA) on grounds of lack of unity. Before the International Search Report (ISR) is established, the applicant is 'invited', under PCT Article 17(3)(a), to pay additional search fees to cover other inventions that have not been searched, giving a very tight one month deadline for paying the fee(s), under Rule 40.1. According to Annex D of the PCT Applicant's Guide, the EPO charges 1700 Euros for every search, which means that doing this can get very expensive for some applications.

Until last year, it didn't really matter whether any additional search fees were paid during the international stage, because extra searches could always be paid in the European regional phase. Following the implementation of Rule 164(2) EPC, however, this is no longer possible. Instead, it is now only possible to pursue inventions not searched during the international phase by filing a divisional application. Filing divisional applications at the EPO can also be a very expensive business.

The question is then what happens when an applicant is no longer interested in the invention searched by the ISA but wants to pursue another invention in the European regional phase that was not searched, and for which no additional search fees were paid. Is the applicant required to file a request to enter the European regional phase, meeting all the requirements of Rule 159 EPC for the claims he doesn't want, and then file a divisional application for the claims he does want? Is it possible instead to file the request for the parent application, but not pay any fees, and file the divisional before the fees become due? Is it possible just to file the European request as a divisional application and not bother with the parent? Or is there some other clever solution that has not been considered?

The IPKat does not have a clear answer, so would very much like to hear from any of his readers who might have ideas or, more preferably, who have done something in this situation that actually works. All contributions, preferably only by means of the comments facility so that all can obtain the benefit (anonymous/pseudonymous, if necessary), would be gratefully received.

Full post as published by IPKat on June 22, 2009 (boomark / email).