1.2.2 Euro-PCT applications without a supplementary European search report
Overview
1.2.2 Euro-PCT applications without a supplementary European search report
Where the EPO has drawn up an international search report (ISR) or a supplementary international search report (SISR) or has issued a declaration under Art. 17(2)(a) PCT, no supplementary European search report is prepared (see the decision of the Administrative Council of 28 October 2009, OJ EPO 2009, 594, and B-II, 4.3.1 and B-II, 4.3.2). In these cases, a written opinion of the ISA (WO‑ISA) or a supplementary international search report (SISR) with explanations under Rule 45bis.7(e) PCT and – if the EPO was also IPEA – an international preliminary examination report (IPER) will already have been transmitted to the applicant during the international phase. The application then immediately falls within the competence of the examining division upon effective entry into the European phase and will, after formalities examination, be passed on for substantive examination on condition that a request for examination has been validly filed.
The applicant is required to respond to the WO‑ISA or SISR prepared by the EPO or, where applicable, to the IPER prepared by the EPO as IPEA. This does not apply where amendments or observations have already been filed within the 31-month time limit and can be considered to be a reply (subject to certain requirements, see A-XIV, 3.1). Whether or not a response is mandatory is clearly stated in the communication, which is therefore worded differently depending on the case (EPO Forms 1226AA and 1226BB).
The communication under Rule 161(1) is issued promptly after expiry of the time limit for entry into the European phase and on condition that the international search report (ISR) is available to the EPO. This means that it is also issued if the applicant has already filed, with EPO Form 1200 or later, amendments and/or comments to form the basis for the procedure in the European phase. The communication under Rule 161(1) is combined with the communication under Rule 162(2) inviting the applicant to pay any claims fees due (see A-XIV, 2.2).
The time limit for response is six months from the invitation under Rule 161(1) and is not extendable. Where a translation of the priority document is required (see A-III, 6.8 and F-VI, 3.4), an invitation to file it under Rule 53(3) may be sent by the examining division only after the period under Rule 161(1) has expired (see A-III, 6.8.2).
Failure to respond to the WO‑ISA, SISR or IPER within this period (by filing amendments and/or comments) leads to the application being deemed withdrawn in accordance with Rule 161(1) unless one of the exceptions described in A-XIV, 3.1 applies. Further processing is available for this loss of rights (see E-VIII, 2). In all cases, the latest filed request on file after expiry of the time limit under Rule 161(1) will then be taken into account when drafting the first communication (see C-II, 1.2, A-XIV, 6.3.2) or when issuing the invitation under Rule 164(2) (see C-III, 3.1), provided that the application is not deemed withdrawn.