5.4.5.Amendments and the Rule 161 EPC/Rule 162 EPC communication if a supplementary European search is carried out

5.4.020If the EPO did not act as ISA or SISA for the application it will draw up a supplementary European search report after expiry of the six-month time limit set in the Rule 161 EPC/Rule 162 EPC communication (EPO Form 1226CC) (see point 5.9.001). Up to expiry of this six-month time limit the applicant may file ("voluntary") amendments. All amendments filed within the time limit set in the communication will be taken into account in drawing up the supplementary European search report and the search opinion (see points 5.9.001 and 5.9.003). This means that the supplementary European search will be based on the last set of claims filed up to expiry of this time limit for which any claims fees due have been paid (see point 5.11.005). Applicants who do not want to use the entire six-month time limit under Rules 161(2) and 162 EPC for filing further amendments can shorten this time limit and request the immediate start of the supplementary search by explicitly waiving their right to use the remainder of the six-month period.

5.4.021Once the extended supplementary European search report has been issued, applicants have an opportunity to comment on both the report and the search opinion and file amendments to the description, claims and drawings within the period specified in the communication under Rules 70(2) and 70a(2) EPC for indicating whether they wish to proceed further with their application and to respond to the extended European search report. The reply is voluntary if the search opinion attached to the supplementary European search report is "positive".

5.4.022If any deficiencies are noted in the search opinion, applicants will be required under Rule 70a(2) EPC to respond to the objections made ("mandatory response"). If they do not submit a substantive reply to such a communication under Rule 70a(2) EPC, their application will be deemed withdrawn. The loss of rights can be remedied with further processing.

5.4.023It is at the examining division's discretion whether to accept any further amendment at a later stage of the proceedings.