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Guidelines for Examination

 
 

8. Reaction to the extended European search report (EESR)

The applicant is required to respond to the search opinion within the time limit for filing the request for examination provided for under Rule 70(1) (see C‑II, 1).

If, however, the applicant filed the request for examination before the search report and the search opinion were transmitted to him (according to Art. 94(1) this also requires payment of the examination fee), he is sent a communication according to Rule 70(2) requesting him to indicate whether he wishes to proceed further with the application within a period to be specified (see C‑II, 1(i). In these cases, the applicant must respond to the search opinion within the time period set under Rule 70(2). This always applies to Euro-PCT applications subject to preparation of the supplementary European search report and search opinion (see B‑II, 4.3 and E‑VIII, 2.5.3), except where the applicant has waived the communication according to Rule 70(2) (see C‑II, 1(ii)), in which case the procedure under B‑XI, 7 applies.

Failure to respond to the search opinion within the applicable period results in the application being deemed to be withdrawn, and the applicant is notified accordingly. In response to this communication of a loss of rights, the applicant can request further processing in accordance with Art. 121 and Rule 135.

There is, however, no requirement for the applicant to respond to the European or supplementary European search report where this was drawn up before 1 April 2010, where it is not accompanied by a search opinion (see B‑XI, 1.1 for applications for which a search opinion is prepared) or where the search opinion was positive (see B‑XI, 3.9). However, in these cases, the applicant may still respond to the search report according to Rule 137(2) if he so wishes. In such cases, the applicant is encouraged to respond to the search report before the application enters the examination stage (see C‑II, 1).

The applicant responds to the search opinion by filing amended application documents according to Rule 137(2) (see C‑II, 3.1) (where amended claims are filed before publication, see A‑VI, 1.3, paragraph 2) and/or by filing his observations on the objections raised in the search opinion, either in addition to, or in place of, such amendments. Such amendments and/or observations will only be examined by the Examining Division if the application enters the examination stage. Likewise, telephone conversations and personal interviews can only take place after the application has entered the examination stage, with the exception of the cases indicated in B‑VIII, 3.2, and 4.2. The examiner must not consent to these earlier.

Procedural requests, such as a request for a personal interview or for oral proceedings, do not constitute a valid reply where these are made without comment on any of the objections raised in the search opinion. In cases where such a request is the only response to the search opinion on expiry of the applicable time limit, the application is deemed to be withdrawn according to Rule 70a(3). The same applies for a request which, at this stage, cannot be considered (e.g. request according to the state of the file).

For applications for which a search opinion was prepared but where the search report was drawn up before 1 April 2010, if the applicant does not reply to the search opinion and the application enters the examination stage (see C‑II, 1 and 1.1), a communication referring to the search opinion and setting a time limit for reply will be issued by the Examining Division as the first communication under Art. 94(3) (see C‑III, 4). Failure to respond to this communication in due time will result in the application being deemed withdrawn according to Art. 94(4).

Where the applicant files amendments in response to the search opinion, if Rule 137(4) is not complied with (see H‑III, 2.1), a communication according to Rule 137(4) (see H‑III, 2.1.1) may be sent in respect of these amendments only after the application has passed to the responsibility of the Examining Division (see C‑II, 1) and only where the application is of one of the types mentioned in H‑III, 2.1.4.