Amending the application – Rule 161 EPC/Rule 162 EPC communication
For the purpose of the procedure before the EPO as designated/elected Office the applicant may always file (voluntary) amendments within the 31-month time limit, and if he subsequently changes his mind he may file (further) amendments until expiry of the time limit set in the combined communication under Rules 161 and 162 EPC ("Rule 161 EPC/Rule 162 EPC communication"). As set out below, if the EPO acted as (Supplementary) International Searching Authority, the applicant may be required to file (mandatory) amendments to or comments on the application within the time limit set in the Rule 161 EPC/Rule 162 EPC communication (see point 5.4.026). Whether or not a response is mandatory is clearly stated in the communication, its wording thus differing depending on the case (EPO Forms 1226AA and 1226BB).
The Rule 161 EPC/Rule 162 EPC communication is issued for each application promptly once the application has entered the European phase and on condition that the ISR is available to the EPO. This means that it is also issued if the applicant has already filed, with Form 1200 or thereafter, amendments and/or comments to form the basis for the procedure in the European phase.
After expiry of the six-month time limit further possibilities for amending the application are limited. If a supplementary European search is carried out, the applicant always has one further opportunity to submit amendments upon receipt of the report (see point 5.4.021). Amendments made thereafter require the consent of the examining division. By way of exception, the applicant may have the opportunity to submit amendments without requiring the consent of the examining division in cases where the supplementary European search is dispensed with (EPO was (S)ISA) and, after expiry of the period according to Rule 161(1) EPC, the examining division considers the application documents on file not to have been searched before. In such a situation, if a further search is carried out according to Rule 164(2)(a) EPC (see points 5.15.011-5.15.012), the applicant may amend the application in response to the communication of the results of that search in accordance with Rule 164(2)(b) EPC.
Whenever amendments are filed, the applicant must identify them and indicate their basis in the application as filed. If he fails to do so, the examining division may issue a communication requesting correction of the omission within a non-extendable time limit of one month. If the deficiency is not remedied in due time, the application will be deemed withdrawn under Article 94(4) EPC. The loss of rights can be remedied with further processing.
Date retrieved: 17 May 2021