3.1 Exceptions where a response to the Rule 161(1) invitation is not required

A response is not required where the WO‑ISA, SISR or, where applicable, the IPER drawn up by the EPO was positive: in this case, filing a reply is always voluntary (A‑XIV, 3).

By contrast, a response to a negative opinion is not required only if comments and/or amendments filed at an earlier stage can be considered a valid response. This is the case in the following situations:

(i)If the applicant filed new amendments and/or comments on entry into the regional phase before the EPO, provided that

–the applicant indicated on entry into the European phase − preferably in Box 6 of EPO Form 1200 − that these amendments and/or comments are to form the basis for further prosecution of the application (A‑XII, 5.4), and

–they constitute a valid response (B‑XI, 8).

(ii)If the applicant filed amendments under Art. 19 PCT and/or Art. 34 PCT in the international phase, and if the EPO prepared either the WO‑ISA in its capacity as ISA or the SISR in its capacity as SISA but did not draw up an IPER, either because the applicant did not file a demand under PCT 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, provided that the applicant

–indicated on entry into the European phase that these amendments are maintained,

–has provided a copy of the amendments filed under Art. 34 PCT with the IPEA other than the EPO, as well as any necessary translations into the language of the proceedings (A‑XIII, 3).

Amendments filed under Art. 19 PCT or Art. 34 PCT that have already been taken into consideration by the EPO acting as IPEA when drawing up the IPER are not considered to constitute a (mandatory) response to a negative IPER as required by Rule 161(1). In such cases, the applicant must therefore respond to the IPER within the six-month period under Rule 161(1).