Lack of unity of invention
If the EPO as SISA is of the opinion that the international application claims more than one invention, it will state the reasons for its finding and perform a search only for those parts of the application relating to the main invention, i.e. the invention first mentioned in the claims. If, however, the ISA has already raised a non-unity objection and the applicant has, upon filing the SIS request, specified for which invention identified in the ISR the SISR is to be drawn up, the EPO as SISA:
will restrict its search to that invention, if it agrees with the finding of the ISA;
will take the applicant's wish into account as far as possible, if the non-unity objection made by the ISA is not followed, but a different non-unity objection is found;
will perform a full search if it considers the requirement of unity of invention to be met.
In the case of a non-unity finding by the EPO as SISA, the applicant cannot pay additional search fees to obtain further searches as in the procedure before the ISA (see point 3.3.013). However, within one month of the date of mailing of the SISR, the applicant may request a review of a non-unity finding. He also has to pay the review fee set by the EPO within the same time limit, direct to the EPO. If the review panel considers the lack of unity objection (partly) justified, a revised SISR taking into account the outcome of the review procedure is established.
Upon entry into the European phase, the EPO as designated/elected Office will consider whether the application for which it acted as SISA, and which meanwhile may have been amended, meets the requirement of unity of invention and whether protection is sought for an invention covered by the SISR. If not, the examining division will invite the applicant to pay, within a period of two months, one or more further search fees in respect of any unsearched inventions claimed upon entry into the European phase in order for these to be covered by a further search (see points 5.15.011 ff).
Date retrieved: 17 May 2021
10 references found.Click X to load a reference inside the current page, click on the title to open in a new page.
EPC Implementing Rules
EPO Guidelines - C Procedureal Aspects of Substantive Examination
EPO Guide for Applicants, part II Int.
EPO Guide for Applicants, part II Int. - C The EPO as ISA and SISA
PCT Implementing Rules
Offical Journal of the EPO
XOJ EPO 2015, A59 - Decision of the President of the European Patent Office dated 9 June 2015 providing for review panels for the implementation of the protest and review procedures under the PCT