3. EPO was (S)ISA – Rule 161(1)

The communication under Rule 161(1) is always issued, i.e. irrespective of whether the EPO drew up a positive or negative opinion in the WO‑ISA, SISR or IPER in the international phase (A‑XIV, 2.1). Whether an opinion is positive or negative is determined according to the same principles as apply for a European search opinion (B‑XI, 3.9). Where the EPO acted as (S)ISA and, if a demand for this was filed, as IPEA, the ISR including the WO‑ISA, or the SISR including the explanations under Rule 45bis.7(e) PCT, and – if the EPO also acted as IPEA – the IPER will have been transmitted to the applicant during the international phase. If the EPO issued a negative WO‑ISA or, where it also acted as IPEA, a negative IPER, or, where it acted as SISA, raised objections in the explanatory notes on the SISR, a response to the objections raised is mandatory. The communication under Rules 161(1) and 162 will make this explicitly clear and is worded differently depending on the case in question (Forms 1226AA and 1226BB).

If deficiencies are established by the EPO in the WO‑ISA, the explanations under Rule 45bis.7(e) PCT in the SISR or, where applicable, the IPER drawn up by the EPO, the applicant must respond to the negative opinion in the form of (mandatory) comments and/or amendments (A‑XIV, 2.1.2). Failure to submit a mandatory response to a negative WO‑ISA, SISR or IPER leads to the application being deemed to be withdrawn under Rule 161(1), last sentence. The loss of rights for non-compliance with Rule 161(1) may be remedied by a request for further processing under Art. 121 (E‑VIII, 2). If the loss of rights is successfully remedied, the latest set of comments and amendments on file after expiry of the time limit under Rule 161(1) will be taken into account when drafting the first communication or when issuing the invitation under Rule 164(2) (A‑XIV, 6.2; C‑III, 3.1).

Beyond the mandatory response, i.e. the response to any deficiencies raised, the applicant may file (further) voluntary comments and amendments in relation to the negative or positive opinion established by the EPO within the six-month period under Rules 161 and 162 (A‑XIV, 2.1.1). Where the WO-ISA, any SISR or, where applicable, the IPER drawn up by the EPO is positive, any comments and amendments filed are voluntary (A‑XIV, 3.1).

An invitation under Rule 164(2) will be issued only if any claimed invention or group of inventions within the meaning of Art. 82 is identified that was not searched by the EPO in its capacity as (S)ISA. This means that, if the claims on entry into the European phase belong to the same invention under Art. 82, no invitation under Rule 164(2) will be issued if the EPO as (S)ISA issued a declaration under Art. 17(2)(a) PCT or Rule 45bis.5(g) PCT. If, however, the applicant provides, within the six-month period under Rules 161 and 162, convincing arguments or amendments overcoming the reasons for limiting the search or issuing the declaration of no search in the international phase, the examiner will perform an additional search in examination at no extra cost, since the search fee paid in the international phase covers the invention concerned (C‑IV, 7.3). If the reasons for limiting the search or issuing the declaration of no search are still present in the claims, the examiner will object under the relevant provision of the EPC, e.g. Rule 43(2), as set out in A‑XIV, 6.2.