December 2010 Issue

EPO Practice Tip


As explained in our previous edition, in cases where the EPO acted as the International Searching Authority during the PCT stage, the amendments to Rule 161 EPC required a mandatory response to the Written Opinion or the IPER within one month, unless certain amendments were previously filed.  In particular, a mandatory response is not required if amendments and/or comments were filed upon entry into the European national phase; amendments filed pursuant to Article 19 and/or 34 PCT were maintained on entry into the European national phase, provided these amendments were not considered in the issuance of an IPER; the Written Opinion or IPER was positive with respect to the claims; or a communication pursuant to Rule 161 had already issued before the rule changes became effective.  If a mandatory response is not required, the EPO typically invites applicants to comment on the Written Opinion or IPER.  We also observed that applicants may eliminate the need to file a response to a Written Opinion or IPER by filing amended documents, e.g., amendments reducing the number of claims pending upon national-phase entry or making the claims consistent with those in another jurisdiction where prosecution has matured.

With the benefit of another few months of practice, it has been further observed that Rule 161 practice shifted to now limit the entry of further amendments in applications where prior amendments or remarks do not address the deficiencies in the Written Opinion or IPER, and the applicant fails to respond to the Rule 161 Communication.  In particular, in those situations, the EPO is allowing the entry of future amendments only with the consent of the Examination Division.  Although it may be too early to determine whether this EPO practice will be permanent or strictly enforced, applicants should respond to all Rule 161 Communications and address the deficiencies noted in the Written Opinion and/or IPER, whether or not a response is required.  Such practice may preserve the opportunity to submit future amendments should the need arise.

In addition, the EPO recently announced a further amendment to Rules 161 and 162 EPC.  The further amendment will extend the time period for responding to a Rule 161 Communication from one month to six months.  This amendment will become effective on May 1, 2011, and will apply to all Rule 161 Communications issuing after that date.  The rule change will provide applicants with additional time to respond to the objections of the searching authority.  For cases where the EPO was not the searching authority, the additional time will provide an extended period for considering potential preliminary amendments to the European application.