In our Autumn 2009 edition of Patent issues, we reported on new EPO rules that require a mandatory response to the Search Opinion. These rules came into force on 1 April this year and we take this opportunity to remind applicants for PCT applications entering the European regional phase of these rules.
If the EPO was the International Searching Authority (ISA), the timescale is very short. The claims should be thoroughly reviewed at the time of EPphase entry, not just to save on fees (€ 210 for each claim in excess of 15) but also to take into account the Written Opinion.
A response* must be filed within one month of receiving a Rule 161 notification month following EP phase entry. We will need a copy of the International Search Report and the Written Opinion at the earliest opportunity.
If the search report has been drawn up by another office (e.g. the USPTO or the JPO), and the EPO draws up a Supplementary Search Report with an accompanying Opinion, a period of four months can be expected for responding and confirming the desire to proceed.
* to the Written Opinion (Chapter I) or an International Preliminary Examining Report (Chapter II) drawn up by the EPO