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ARTICLE · 04 NOVEMBER 2014

New European Unity Rules In Effect November 1, 2014

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
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Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

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On November 1, 2014, amended Rule 164 of the European Patent Convention, which was previously analyzed by Global IP Matters, finally went into effect.

European UnionIntellectual Property
Christina Sperry
Christina Sperry
David Wraige
David Wraige
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Good news for European patent applicants! On November 1, 2014, amended Rule 164 of the European Patent Convention (EPC), which was previously analyzed by Global IP Matters, finally went into effect. Rule 164 as amended offers applicants more flexibility because the European Patent Office (EPO) will now search multiple inventions regardless of the International Searching Authority (ISA) chosen for a Patent Cooperation Treaty (PCT) application having entered the regional phase in Europe. A brief overview of the practical effects of new Rule 164 follows.

Under old Rule 164, when the EPO was not the ISA for a PCT application having entered the European national phase, the EPO would only search the first invention in the claims. This practice would typically result in only claim 1 (and any claims united therewith) being examined in Europe, with any additional inventions identified by the EPO requiring pursuit in one or more divisional applications. When the EPO was the

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