5.2 The communication under Rules 70(2) and 70a(2) after supplementary European search

If the applicant validly filed a request for examination before the European search report was transmitted to them, the EPO invites them in a communication under Rules 70(2) and 70a(2) to comment on both the report and the search opinion and to file amendments to the description, claims and drawings within the period specified in this communication. The communication is issued promptly after transmittal of the supplementary European search report.

The applicant is given a time limit of six months from notification of this communication for filing the confirmation required under Rule 70(2) that they wish to proceed further with their application (A‑VI, 2.2) (J 8/83).

If applicants do not wish to proceed further to examination, they may actively withdraw their application or else allow it to lapse by simply not filing a reply within the time limit set in the communication under Rules 70(2) and 70a(2). In the latter case, the application will be deemed withdrawn under Rule 70(3). This loss of rights may be remedied by a request for further processing under Art. 121 (E‑VIII, 2).

Responding to the search opinion in the form of comments and/or amendments is voluntary where the search opinion, which is part of the supplementary European search report, is positive (voluntary reply). By contrast, the applicant must respond to the search opinion within the time limit under Rule 70(2) if it is negative (mandatory reply) (A‑XIV, 2.1.1; C‑II, 1.1). If the applicant fails to submit comments and/or amendments as a substantive response to the objections in the search opinion in due time, the application will be deemed withdrawn in accordance with Rule 70a(3) (OJ EPO 2009, 533) (B‑XI, 8). This loss of rights may be remedied by a request for further processing under Art. 121 (E‑VIII, 2).

However, no search opinion under Rule 62 will be issued where the applicant filed the request for examination in accordance with Rule 159(1)(f) (A‑XIII, 7) and waived their right to be asked under Rule 70(2) EPC whether they wish to proceed further with the application before the supplementary European search report has been transmitted to them in accordance with Rule 10(4). This can be done by selecting the appropriate checkbox in section 12.2 of EPO Form 1200 (OJ EPO 2017, A74). In that case, no search opinion will be issued, and the application proceeds directly to examination after the supplementary European search report has been drawn up (A‑XIV, 5.2). The examining division will then either issue a communication under Art. 94(3) EPC, which replaces the search opinion, or a communication under Rule 71(3) EPC if the application is ready for grant (B‑XI, 7; C‑V). See A‑XII, 7.3 for the further requirements for this waiver to be effective and C‑VI, 3 for the procedure to be followed in such cases of a "categorical request for examination", as provided for in Rule 10(4).

Where the application is withdrawn, refused or deemed withdrawn before substantive examination has begun, the examination fee is refunded in full in accordance with Art. 11(a) RFees (OJ EPO 2016, A48 and A49; OJ EPO 2019, A82). If applicants actively withdraw their application after substantive examination has begun but before expiry of the time limit for replying to the first invitation issued by the examining division under Art. 94(3) or, if no such invitation has been issued, before the date of the communication under Rule 71(3), the examination fee is refunded at a rate of 50% in accordance with Art. 11(b) RFees (OJ EPO 2019, A82). For details of the procedure under Art. 11 RFees, see A‑VI, 2.2 and 2.5.