Guidelines for Examination

Where the application under consideration derives from an international application for which the EPO did not act as ISA or as the authority charged with the supplementary international search (SISA), the application is subject to a supplementary European search under Art. 153(7) (see B-II, 4.3, the Decision of the Administrative Council of 28 October 2009, OJ EPO 2009, 594, the Notice from the EPO dated 24 March 2010, OJ EPO 2010, 316 and the Notice from the EPO dated 4 April 2011, OJ EPO 2011, 354), and normally an EESR is issued accordingly (see B-XI, 1 and B-XI, 2). The first communication is then issued as in C-III, 4.

The applicant may, but is not required to, reply to the WO-ISA, IPER or SISR drawn up by an authority other than the EPO, normally in the form of amendments and/or comments filed with Form 1200 or in response to a communication under Rule 161(2). If the applicant does reply to the WO-ISA, IPER or SISR, the supplementary search report and the search opinion will be drawn up taking this reply into account (see B-II, 4.3 and B-XI, 2).

Furthermore, no communication under Rule 161(2) or Rule 162 is issued if the applicant has explicitly waived his right to these and has already paid any claims fees due (see the Notice from the EPO dated 4 May 2010, OJ EPO 2010, 352).

When preparing the first communication in examination for such cases, the examiner may have to consider the international search report (with the corresponding International Preliminary Report on Patentability (IPRP) or the International Preliminary Examination Report (IPER)), any supplementary international search report (SISR), any supplementary European search report (with the corresponding search opinion) prepared by the EPO (see B-II, 4.3) and any reply filed in response thereto (see C-II, 3.1).