If the EPO acted as ISA, the authority specified for the supplementary international search (SISA) and/or IPEA, a written opinion of the ISA (WO-ISA), a supplementary international search report (SISR) and/or an international preliminary examination report (IPER) will already have been transmitted to the applicant during the PCT phase. For applications where a communication according to Rule 161 has not yet been issued by 1 April 2010 and where a supplementary European search report is not prepared (see B‑II, 4.3 and the Decision of the Administrative Council of 28 October 2009, OJ EPO 2009, 594), the applicant will be required to respond to the WO-ISA or SISR prepared by the EPO or, where applicable, to the IPER prepared by the EPO as IPEA. This does not apply where amendments or observations have already been filed which can be considered to be a reply (subject to certain requirements, see E‑IX, 3.3.1 and E‑IX, 3.3.5). The time limit for response is six months from the invitation according to Rule 161(1) and is not extendable. Failure to respond to the WO-ISA, SISR or IPER within this period (by filing amendments and/or comments) leads to the application being deemed to be withdrawn according to Rule 161(1) (further processing is available for this loss of rights – see E‑VIII, 2). In all cases, the latest filed request on file after expiry of the time limit according to Rule 161(1) will then be taken into account when drafting the first communication (see E‑IX, 4.3.2) or when issuing the invitation under Rule 164(2) (see C‑III, 2.3), provided that the application is not deemed to be withdrawn.[Rule 161(1); ]
The communication under Rule 161(1) is issued promptly after expiry of the time limit for entry into the European phase.
In order to proceed with the examination of the application without having to wait until the expiry of the six-months' time limit for response, the applicant may explicitly waive his right to a communication pursuant to Rule 161(1) and Rule 162. Provided that on entry into the European phase, he has also already responded, where required, to the WO-ISA, the IPER or the SISR and paid the claims fees, no communication under Rules 161 and Rule 162 will be issued. If this is not the case, the communication will be issued and the application will be processed only after expiry of the six-month period, even in the presence of a request under the PACE programme (see E‑VIII, 4).
Where the EPO is an elected Office, the international preliminary examination report and the documents attached to it must be considered in accordance with E‑IX, 4.3.
Date retrieved: 30 December 2018