Euro-PCT partial search: paying, protesting or abandoning the second invention
A Euro-PCT application entered the European phase on 3 November 2023. The EPO did not act as International Searching Authority; the international search was carried out elsewhere. On 12 March 2024 the EPO issued a partial supplementary European search report covering claims 1-10 (invention I) only, together with an invitation under Rule 164(2) EPC. The division considers that claims 11-18 (invention II, a lamination station) and claims 19-22 (invention III, a control method for that station) lack unity with invention I and with each other, and invites payment of two additional search fees of EUR 1 395 each within two months. The client is convinced that claims 11-18 and 19-22 share the same special technical feature, namely the pressure roller arrangement described at page 22, and that the control method cannot be assessed separately from it. The client has limited budget but regards the lamination station as its core product. It also asks whether it could simply amend claim 1 to include the pressure roller arrangement instead of paying.
1. State the deadline precisely, list the options open to the applicant and explain which route you recommend.
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Deadline. Two months from the date of the invitation, calculated under Rule 131 EPC, gives 12 May 2024. That date is a Sunday, so under Rule 134(1) EPC the period runs to Monday 13 May 2024. The period is not extendable.
Options.
- Pay both fees without protest. The search is extended to inventions II and III; the unity finding is accepted; the money is gone whatever the outcome. Cost: EUR 2 790.
- Pay both fees under protest. This is the only route that preserves the challenge. Under Rule 164(2) the protest must be paid for - the additional fees must actually be paid - and must be accompanied by a reasoned statement explaining why the inventions are linked by a single general inventive concept. If the protest is found justified, the additional fees are refunded and the search is carried out on the protested inventions; if it fails, the fees are retained. There is no separate protest fee, and the protest is examined by a review panel.
- Pay nothing and do not protest. The search stays limited to claims 1-10; the subject-matter of claims 11-22 is not searched in this application and can only be pursued in one or more divisionals filed while this application is pending.
- Amend claim 1. This does not avoid the invitation: the amended claim would still have to be searched and the division is not obliged to re-open the unity finding at this stage.
Recommendation. Pay under protest for invention II, which is the client's core product, and do not pay for invention III. That limits the outlay to EUR 1 395 while preserving both the search and the argument on the claim set the client cares about.
2. What must the protest contain to have a realistic chance, and what is the practical consequence if it fails?
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Content of the protest.
- Reasoning, not assertion. Simply stating that the inventions are linked is not enough. Identify the single general inventive concept and show, claim by claim, that the same special technical feature - here the pressure roller arrangement at page 22 - is present in the independent claims of each group and makes a technical contribution to the prior art.
- A technical, not a formal, argument. The panel will look at whether that feature solves the same technical problem in each group and whether it is the contribution over the prior art; if the only common matter is the general purpose of the machine, unity is indeed lacking (a posteriori lack of unity).
- Address each pair. Invention II versus I and II versus III must both be argued; winning against one does not secure the other.
- Language and form. File in the language of the proceedings, within the two months, together with the payment. The protest must be signed and reasoned at the time of payment - a promise to provide reasons later is not a valid protest.
If the protest fails. The additional fee for that invention is not refunded and the search is carried out, or stays, on the basis the division considered correct. There is no further appeal against the protest outcome as such; the substantive question of unity can still be raised in examination and, ultimately, in appeal against a refusal, but that is expensive and unlikely to succeed where the panel has given a reasoned technical finding.
If the protest succeeds. The fee is refunded and the search covers the protested invention, so the claim set remains intact within this application. Advise the client in writing, before 13 May 2024, that this is a technical argument with a real but uncertain outcome and that the fallback is a divisional.