Following receipt of the search report and search opinion, and prior to the first communication from the examining division, the applicant must (subject to certain exceptions) respond to the search opinion, by filing amendments to the description, claims or drawings and/or filing his observations on the objections raised in the search opinion (see B‑XI, 8, for details, in particular as to the exceptions where no reply is required). In order to avoid delays, care should be taken to comply with the requirements of Rule 137(4) when filing such amendments (see OJ EPO 2009, 533, point 7). Any amendments filed at this stage are made by the applicant of his own volition in accordance with Rule 137(2) (for more details, see C‑III, 2.1).
The applicant's response to the search opinion required by Rule 70a (or filed voluntarily in response to search opinions not requiring a response) will be taken into account by the examining division when drafting the first communication. Failure to respond to this communication in due time will result in the application being deemed withdrawn according to Art. 94(4), although this loss of rights is subject to further processing (see E‑VIII, 2). With regard to what constitutes a valid response, see B‑XI, 8.
In exceptional cases the examining division may decide to issue summons to oral proceedings as the first action in examination proceedings (see C‑III, 5). In such a case, the applicant's response to the search opinion will be taken into account when drafting the annex to the summons.
If the European search report or supplementary European search report was accompanied by a search opinion but was drawn up before 1 April 2010 (such that a reply to the search opinion was not mandatory – see B‑XI, 8) and the applicant did not reply to it, a communication referring to the search opinion and setting a time limit for reply would have been issued as the first communication under Art. 94(3). Failure to respond to this communication in due time would have resulted in the application being deemed withdrawn according to Art. 94(4).
The procedure explained in the above paragraphs also applies to Euro-PCT applications for which the EPO prepares a supplementary European search report and a search opinion (see B‑II, 4.3, and B‑XI, 1.1).