From 1 May 2011, the European Patent Office has decided to extend, from 1 month to 6 months, the time period for filing claims or responding to the Written Opinion of the International Searching Authority when commencing European processing of a PCT application. The period for response is triggered by issuing a communication under Rule 161/162 (explained in Autumn 2009
More breathing space for ex-PCT applicants? Yes, but there's a catch. The EPO have announced that it's not only a maximum time period, but also a minimum delay.
The change assists applicants having to file a response to an international search opinion. It allows more time to formulate appropriate claims and a response strategy after European regional phase entry. But once the Rule 161/162 communication has issued, the 6-month period it establishes cannot be shortened. An early response is not enough to progress the prosecution of the application. The application will not be passed to the Search Division or the Examining Division for action until the full period has elapsed, even if the applicant fulfills all the requirements of Rules 161 and 162 EPC (e.g., by amending the claims, paying fees and/or, where the EPO was the ISA, addressing any issues raised in the international search). This irritating catch was announced in the May Official Journal of the EPO.
We have made enquiries with the EPO and it has been confirmed to us that even formally requesting that the application be sent to the responsible division will not cut short the 6-month period.
Unless the applicant waives the right to receive the Rule 161/162 communication, the supplementary search or examination of a Euro-PCT applications will now start later than was previously the case, and this longer period may cause an undesired delay in prosecution.
Waiving the right to the communication under Rules 161 and 162 EPC
An applicant who wishes to press on with prosecution may choose to waive the right to communication under Rules 161 and 162 EPC. In this case, the application will proceed direct to the Search or Examining Division.
We advise doing so if:
• no substantive response to the Written Opinion is necessary; or
• you are in a position to give us complete instructions (including amendments if necessary) to respond to the Written Opinion in advance of European regional phase entry and we have your instructions to reduce the claims to just 15 (if there are more than that number of claims) or you are content to pay claims fees for any claims in excess of that number.
If you additionally require accelerated examination, we recommend this is explicitly requested on European regional phase entry.