Under R. 70(2) EPC (former Art. 96(1) EPC 1973) if the request for examination has been filed before the European search report has been transmitted to the applicant, the Office shall invite the applicant to indicate, within a period to be specified, whether he wishes to proceed further with the application, and shall give him the opportunity to comment on the search report and to amend, where appropriate, the description, claims and drawings.

Following J 8/83 (OJ 1985, 102), it is the practice of the Office to send the invitation provided for in R. 70(2) EPC also in cases where a supplementary European search report is to be drawn up on a Euro-PCT-application (see Guidelines E‑IX, 2.5.3 – November 2018 version).

In J 8/83 (OJ 1985, 102) and J 9/83 the Legal Board found that if a supplementary European Search report has to be drawn up in respect of an international application which was deemed to be a European patent application, the applicant was entitled to receive the invitations provided for in Art. 96(1) EPC 1973 and R. 51(1) EPC 1973. Since in the case of such an international application, responsibility for examination of the application did not pass to the examining division until the applicant had indicated under Art. 96(1) EPC 1973 that he desired to proceed further with his application, the applicant might obtain a refund of the examination fee if in response to the invitation under Art. 96(1) EPC 1973 he withdrew his application, or allowed it to be deemed to be withdrawn.

The Legal Board noted that the provisions of Art. 96(1) EPC 1973 and R. 51(1) EPC 1973 clearly operated in the respective interests of applicants, third parties and the EPO by encouraging applicants to review their applications critically and realistically in the light of the European search report, before substantive examination began. The opportunity given by the EPO to obtain a refund of the substantial fee for examination by withdrawing the application at that stage, or allowing it to be deemed to be withdrawn, provided an additional incentive to withdraw cases unlikely to succeed.