The time period for responding to the Rule 161/162 communication (issued shortly after entry into the European regional phase) is six months. In certain situations, this relatively long period may introduce an unwanted delay in prosecution. This information sheet explains how the delay may be avoided by waiving the right to the communication under Rules 161 and 162.
Communication under Rules 161 and 162
Shortly after an international application enters the European regional phase the EPO issues a “communication under Rules 161 and 162”. The action that is required in response to such a communication depends on who conducted the international search and, in some cases, whether or not amendments were filed on entry into the European regional phase:
- EPO was the international search authority
Where the EPO was the international search authority and no amendments were made on entry into the European regional phase the communication sets the time limit for submitting a mandatory response to objections raised in the international search. The communication also sets the time limit for filing any voluntary amendments and for paying claims fees for each claim in excess of 15 claims. If amendments were filed on entry into the European regional phase, the mandatory response is not necessary and so the communication only refers voluntary amendments and excess claim fees.
- EPO was not the international search authority
Where an authority other than the EPO conducted the international search, the communication sets the time limit for voluntarily amending the application before the EPO conducts its supplementary search. It also sets the time limit for paying claims fees for each claim in excess of 15 claims.
The time period for reply is six months.
Whilst this extended deadline may be useful to applicants having to file a mandatory response to the international search opinion, it may cause an undesired delay in prosecution for cases where no substantive response is necessary.
There has also been the suggestion (although it is not entirely clear) that, in cases where a Rule 161/162 communication is issued (i.e. because it has not been waived), an early response does not progress the prosecution of the application but that the EPO still waits for the expiry of the 6 month period set by the Rule 161/162 communication.
In instances where such a delay is unwanted, the applicant may wish to waive their right to the communication under Rules 161 and 162. Applicants who would like to expedite prosecution may also wish to request accelerated search and/or examination at the EPO using “PACE”, as discussed in our separate information sheet 'UK & European Patents- Accelerated Prosecution'.
How to waive the communication under Rules 161 and 162
To waive the right to the communication under Rules 161 and 162 EPC the applicant must, upon entering the European phase:
indicate that they wish to waive their right to the communication, and
fulfil the requirements of Rules 161 and 162 EPC (i.e. pay any claims fees due and, where the EPO was the ISA, deal with the objections raised in the international search).
What action should Applicants take?
Plan ahead. If you would like to waive the communication please:
o tell us that you would like to do so ahead of the deadline for entering the European phase.
o prepare (or ask us to prepare) comments and/or amendments for response to objections and/or voluntary amendments in good time before the deadline for entering the European phase.
If you would like further advice, please contact us.
This information is simplified and must not be taken as a definitive statement of the law or practice.