Quick Navigation

 

Guidelines for Examination

 
 

3.3.1 Earlier filed amendments or comments

In certain cases, even though the EPO was the ISA or the SISA, the applicant is not required to respond to the communication under Rule 161(1). These exceptions are explained below:

(i)
If the applicant has filed new amendments and/or comments upon entry into the regional phase before the EPO, he will still be sent a communication according to Rule 161(1), but in this case he will not be required to respond to it (note, however, that if the requirements of Rule 137(4) were not fulfilled for amendments already filed, it is advisable to make the required indications in reply to the Rule 161(1) communication in order to avoid a further communication according to Rule 137(4)).
(ii)
If the applicant filed amendments according to Art. 19 and/or 34 PCT in the international phase and these amendments are maintained on entry into the European phase, and if the EPO prepared the WO-ISA or SISR but no IPER (either because the applicant did not demand Chapter II or because the IPEA was an office other than the EPO), then these amendments are considered to constitute a response to the WO-ISA or SISR; the applicant will still be sent a communication according to Rule 161(1) in such cases, but he will not be required to respond to it (note, however, that if the requirements of Rule 137(4) were not fulfilled for amendments already filed, it is advisable to make the required indications in reply to the Rule 161(1) communication in order to avoid a further communication according to Rule 137(4)).

With regard to the above cases (i) and (ii), however, see also E‑VIII, 3.3.5. Furthermore, if amendments have been filed under Art. 19 or 34 PCT and have been taken into consideration in the drawing up of an IPER by the EPO acting as IPEA, these are not considered to constitute a response to the IPER as required by Rule 161(1); in these cases, the applicant is required to respond to the IPER within the six-month period according to Rule 161(1).

In cases (i) and (ii) above, no communication under Rule 161(1) or 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 and the Notice from the EPO dated 5 April 2011, OJ EPO 2011, 354).