Where the application is a European application not derived from an International application, the applicant cannot amend his application before the search report has been communicated to him. Consequently, in these cases, the search opinion will always relate to the application documents as originally filed. Furthermore, any reply filed by the applicant in response to an invitation according to Rule 63(1) (see B‑VIII, 3.4) will also be taken into consideration when drawing up the search opinion.[Art. 123(1); Rule 137(1); ]
However, where the application under consideration derives from an International application and is subject to a supplementary European search according to Art. 153(7) (see B‑II, 4.3), the applicant will have had the opportunity to amend his application both in the International phase and also upon entry into the European phase. The search opinion will then be based on the application documents constituting the latest filed request from the applicant (this may involve the cancellation of amendments previously filed and consequent reversion in part or in full to an earlier set of application documents). The supplementary European search report is also based on these application documents (see B‑II, 4.3, and B‑III, 3.3.2).[Rule 161(2); Rule 159(1)(b); Art. 19 PCT; Art. 34(2)(b) PCT; ]
Where the search opinion and supplementary European search report are based on such amendments but Rule 137(4) has not been satisfied (see H‑III, 2.1), a communication according to Rule 137(4) (see B‑VIII, 6 and H‑III, 2.1.1) cannot be sent at this stage (before preparation of the search opinion) because the application is not yet under the responsibility of the examining division (see C‑II, 1). However, once the examining division has assumed responsibility for the application, it may send such a communication, provided that the amendments in question have not been withdrawn or superseded (see H‑III, 2.1.1) and only where the application is of one of the types mentioned in H‑III, 2.1.4.
2.1 Applications containing missing parts of description and/or drawings filed under Rule 56 EPC or Rule 20 PCT
Date retrieved: 30 December 2018
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EPC Implementing Rules
XR.159 EPC The European Patent Office as a designated or elected Office – Requirements for entry into the European phase
EPO Guidelines - A Formalities Examination
EPO Guidelines - B Search
XGL B XI 2.1 Applications containing missing parts of description and/or drawings filed under Rule 56 EPC or Rule 20 PCT