If the applicant replies to the invitation under Rule 63(1) but in his reply indicates subject-matter which it is still not possible to search in full, the Search Division will determine the subject-matter to search, but will do so in a way which is consistent with the applicant's response, to the extent that this is possible, or in exceptional cases may determine that no meaningful search is possible at all.
Statements consisting of reworded claims filed in reply to a communication pursuant to Rule 63 are not considered as amended claims in view of Rule 137(1) but merely as explanations in respect of the set of originally filed claims. These claims will then be formally introduced in the proceedings upon receipt by the EPO of a statement to that effect filed by the applicant within the time limits under Rule 70(1) and (2). This confirmatory statement can be filed either together with the reply to the extended European search report (Rules 70a(1) and Rule 70a(2)), or, where applicable, when complying with the requirements under Rule 70(1) and (2). As far as possible the Search Division will draw up the search report in the light of these clarifications. Both the search report and the search opinion should clearly indicate what has been searched.
If the applicant replies in time to the invitation under Rule 63(1), he may, instead of indicating the subject-matter to be searched, simply argue why he believes that it is possible to carry out a meaningful search on all of the subject-matter claimed. If the Search Division is convinced by the applicant’s argumentation, a full search report will be issued and the consequences of a limitation of the search which apply in examination will not ensue. If the Search Division is not convinced, or is only partially convinced, it will issue a partial search report and will determine which subject-matter to search or, in exceptional cases, will issue a declaration replacing the search report. The final responsibility as to whether an invitation under Rule 63 was appropriate lies with the Examining Division.
Furthermore, the applicant may, in reply to an invitation under Rule 63, file arguments against the findings in the invitation requesting as a main request that the claims as filed be completely searched and as an auxiliary request, in case the examiner is not convinced, indicate specific subject-matter to be searched (see also H-III, 3.2).
A telephone consultation may take place if the applicant phones the examiner to enquire about the course of action after an invitation under Rule 63 has been sent. The consultation should be limited to formal issues concerning the content of the invitation and the options available to the applicant. The examiner writes minutes of the telephone consultation. The time limit set with the invitation is still applicable for the applicant to file a written reply; the telephone consultation per se does not constitute a valid reply.