If the EPO has performed a search for an international application in its capacity as ISA or SISA, it will not carry out a supplementary European search upon entry into the European phase (see point 577), and any amendments filed within the time limit set in the Rule 161 EPC/Rule 162 EPC communication will serve as the basis for examination.
If the EPO in the international phase made any negative finding and drew up a "negative WO-ISA" or, where the EPO also acted as IPEA, a "negative IPER" or made "objections" in the explanatory notes on the SISR ("negative SISR"), the applicant is required under Rule 161(1) EPC to respond to this finding ("mandatory response").
OJ 2010, 634
If a response is mandatory, the applicant must respond to the Rule 161 EPC/Rule 162 EPC communication within the six-month time limit set therein, unless a substantive response has already been submitted. For the purpose of Rule 161(1) EPC new amendments filed on entry into the European phase and up to the time the Rule 161 EPC/Rule 162 EPC communication is issued are held to constitute a response on condition that the applicant has indicated - preferably in Box 6 of Form 1200 - that they form the basis for prosecution of the application in the European phase.
Under the same conditions as for amendments made on entry into the European phase or thereafter, but subject to certain requirements set out in detail in the Guidelines, any amendments made under Article 19 PCT and/or Article 34 PCT and maintained for the processing of the application in the European phase will constitute a response.
Further, if the EPO acted as ISA, SISA or IPEA in the international phase, and regardless of whether the EPO in the international phase made any negative finding (see point 502), the applicant has the right to submit (further) comments on the WO-ISA, IPER and SISR and to file (further) voluntary amendments as he sees fit within the time limit set in the Rule 161 EPC/Rule 162 EPC communication.
All comments and amendments validly filed by the applicant on a mandatory or voluntary basis within the time limit set in the Rule 161 EPC/Rule 162 EPC communication will be taken into account in the examination proceedings. This means that examination will be based on the last set of claims filed up to expiry of this time limit for which any claims fee required is duly paid (see points 616 ff). If the applicant does not wish to wait for the end of the six-month time limit under Rules 161(1) and 162 EPC for processing to start, he may request the immediate start of examination by explicitly waiving his right to use the part of the six-month period that has not yet expired at the date the waiver is received.
Date retrieved: 30 December 2018