European patents - A few comments on the communication pursuant to Rules 161(1) and 162 EPC

I would like to briefly analyze in this post this communication referred above because I was honestly surprised when I first discovered the complexity of this communication.

First of all, we always receive this communication pursuant to Rules 161(1) and 162 EPC (communication - Rule 161 from now on) after filing a Euro-PCT, i.e. when a PCT has entered the European phase.

During the prosecution of our PCT, we received an International Search Report (ISR) along with a Written Opinion (WO) from the corresponding Examiner in our particular case. This communication - Rule 161 provides us with the opportunity to file amendments and/or corrections to that WO as received.

The tricky part of this communication is basically that the EPO has three different templates for this communication – Rule 161 and only one of them is mandatory while the other two simply open a period for voluntary amendments. One easy way to differentiate these three communications is to pay attention to the bottom of the first page, where we can find this information:

There we find the EPO´s code for this particular form (1226) followed by two letters: AA in this case. AA means that we received a negative WO during our PCT prosecution and therefore our response to this communication is mandatory. But if we receive this same form followed by the letters BB or CC means that our response is not mandatory but at our own volition.

Although in the past this communication set a 2-month response period, this term has now been extended to a 6-month period to file a response to the WO. In case we do not file a response within this time, our application will be deemed to be withdrawn. Given that the further processing is allowed with respect to this communication, we will receive the corresponding notifcation of “Noting of loss of rights” which will set a new 2-month period to request further processing, file a response and pay the corresponding further processing fee.

Of course, given that this is a registered letter, we will always have the 10 extra mailing days to add to the 6-month period referred above.

As a final note, please bear in mind that if the applicant checks the waive of the rights when filing the Regional entry before the EPO and further comments to a negative ISR and WO have not been filed, the waive will not be taken into consideration: the waiver will have no effect at all.