2.1 Amendments under Rule 161(1) and (2)

In the procedure before the EPO as designated/elected Office, Rule 161 implements the right of applicants under the (higher-ranking) PCT to make amendments on entry into the national/regional phase (Art. 28(1) PCT and Art. 41(1) PCT) (A‑XII, 1.1).

Under no circumstances may any amendment filed with the EPO as designated/elected Office or in the international phase go beyond the disclosure in the international application as filed. The EPO is not bound by an amendment accepted in the international phase in breach of Art. 28(2) PCT or Art. 41(2) PCT and Art. 123(2).

The communication under Rules 161 and 162 is issued promptly after the EPO has become competent to process the application (A‑XII, 3), once it has established compliance with the applicable minimum requirements for entry into the European phase. Its issue will be delayed if the EPO has not yet received the ISR.

The period under Rules 161 and 162 for filing (further) amendments and paying any claims fees due is six months. This six-month period cannot be extended (E‑VIII, 1.6). However, further processing is available both for paying unpaid claim fees and for addressing any deficiency noted in the WO‑ISA, SISR or IPER established by the EPO (A‑XIV, 2.2 and 3). The communication also informs the applicant that the application has entered the European phase.

The communication under Rules 161 and 162 will be issued in all circumstances. This means that it is issued regardless of whether the EPO acted as (S)ISA or IPEA in the international phase, and regardless of whether the EPO or another International Authority arrived at any negative finding in the WO‑ISA, SISR or IPER (A‑XIV, 2.1.1). It is also issued where the applicant has already filed, together with EPO Form 1200 or later, amendments and/or comments intended to form the basis for the proceedings in the European phase (A‑XII, 5.3.1). The only exception is where the applicant has validly waived the right to receive the communication (A‑XII, 7.2).

Applicants who do not want to use the entire six-month period under Rules 161 and 162 for filing further amendments can shorten it and request the immediate start of either the supplementary European search or substantive examination, as applicable, by explicitly waiving their right to use the remainder of the six-month period under the same conditions as apply to the waiver filed at the time of entry into the European phase (A‑XII, 7.2).

If the applicant files several sets of amendments with the EPO as designated/elected Office, the EPO will proceed on the basis of the last set of amendments filed within the six-month period under Rules 161 and 162, provided that any claims fees due for that final set have been duly paid (A‑XIV, 2.2). Any unpaid claims fees will result in a partial loss of rights that may be remedied by a request for further processing (A‑XIV, 2.2).

For the reasons set out in A‑XII, 5.3, it is advantageous for both the EPO and the applicant if any amendments that the applicant wishes to serve as the basis for the European phase processing are filed together with EPO Form 1200. This avoids payment of an incorrect amount of the filing fee, including the additional (page) fee (A‑XII, 5.3; A‑XIII, 4).