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, and if the EPO acted as (Supplementary) International Searching Authority, the applicant may also be required to file (mandatory) amendments to and/or comments on the application within the time limit set in the Rule 161 EPC/Rule 162 EPC communication (see point 503). 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 498). Amendments made thereafter require the consent of the examining division. By way of exception, 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, a further search is carried out in the European phase according to Rule 164(2)(a) EPC (see points 668-669), the applicant may also submit amendments in response to the communication of the results of that search in accordance with Rule 164(2)(b) EPC and without requiring the consent of the examining division.
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 If the deficiency is not remedied in due time, the application will be deemed withdrawn under Article 94(4) EPC.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: 30 December 2018
23 references found.Click X to load a reference inside the current page, click on the title to open in a new page.
EPC Implementing Rules
EPO Guidelines - E General Procedural Matters
EPO Guide for Applicants, part II Int.
EPO Guide for Applicants, part II Int. - E Euro-PCT procedure before the EPO as designated or elected Office
XGA E IV 5 Amendments and the Rule 161 EPC/Rule 162 EPC communication if a supplementary European search is carried out
XGA E IV 6 Amendments and the Rule 161/162 communication if no supplementary European search is carried out