GL F V 7.1 International applications without supplementary search

As indicated in B‑II, 4.3.1, for certain international applications entering the European phase with an international search report, no supplementary European search is carried out. The following situations may then be distinguished during substantive examination:[Art. 153(7); ]
(i)If, during the international search, an objection of lack of unity has been raised and the applicant has not taken the opportunity to have the other invention(s) searched by paying additional search fees for them, but has taken the opportunity to amend the claims after receipt of the international search report (see E‑IX, 3.3.1) so that they are limited to the invention searched and has indicated that examination is to be carried out on these amended claims, the examining division proceeds on the basis of these claims.
(ii)If, during the international search, an objection of lack of unity has been raised and the applicant has neither taken the opportunity to have the other invention(s) searched by paying additional search fees for them, nor amended the claims so that they are limited to the invention searched, and the examining division agrees with the objection of the ISA (taking into account any comments on the issue of unity submitted by the applicant in the response to the WO‑ISA or IPER, see E‑IX, 3.3.1), the examining division will then proceed to issue an invitation under Rule 164(2) to pay search fees for any claimed invention in the application documents for which no additional search fee has been paid to the EPO, where it has acted as the ISA.[Rule 164(2); ]
(iii)If additional search fees have been paid during the international phase, the applicant may determine that the application is to proceed on the basis of any of the searched inventions, the other(s) being deleted, if the examining division agrees with the objection of the ISA. Where the applicants have not yet taken that decision, the examining division will, at the beginning of substantive examination, invite them to do so.
(iv)If the claims to be examined relate to an invention which differs from any of the originally claimed inventions, the examining division will proceed to issue an invitation under Rule 164(2) to pay search fees for any claimed invention in the application documents not covered by the international search report or supplementary international search report, if any (see C‑III, 2.3).
(v)If the applicant has not paid additional search fees during the international phase and the examining division does not agree with the objection of the ISA (for example, because the applicant has convincingly argued in response to the WO‑ISA or IPER, see E‑IX, 3.3.1, that the requirement of unity of invention is satisfied), an additional search will be performed (see B‑II, 4.2(iii)) and the examination will be carried out on all claims.
In cases (i) to (iv), the applicant may file divisional applications for the inventions deleted to meet the objection of non-unity (see C‑IX, 1, and A‑IV, 1), provided that, when a divisional application is filed, the application being divided is still pending (see A‑IV, 1.1.1).[Rule 36(1); ]

Source: http://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_v_7_1.htm

Date retrieved: 17 May 2021

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EPC Articles

EPC Implementing Rules

EPO Guidelines - A Formalities Examination

EPO Guidelines - B Search

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EPO Guidelines - E General Procedural Matters

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