8. Response to the extended European search report (EESR) 

Applicants have to respond to the search opinion within the time limit for filing the request for examination under Rule 70(1) (see C‑II, 1 and A‑VI, 2.1).

However, where applicants filed a request for examination (which under Art. 94(1) means also paying the examination fee) before the search report and the search opinion were transmitted to them, they are sent a communication under Rule 70(2) asking them to confirm that they wish to continue with the application and setting a period for this (see C‑II, 1(i)). They then also have to respond to the search opinion within that period. This is generally what happens for Euro-PCT applications for which a supplementary European search report and search opinion have to be drawn up (see B‑II, 4.3 and E‑IX, 2.5.3), unless the applicant has waived the right to a communication under Rule 70(2) (see C‑II, 1(ii)), in which case the procedure under B‑XI, 7 applies.

If applicants do not respond to the search opinion in time, their application will be deemed to be withdrawn and they will be notified of this loss of rights accordingly. They can then request further processing in accordance with Art. 121 and Rule 135.

Applicants are not required to respond to the European or supplementary European search report where it was drawn up before 1 April 2010, where it is not accompanied by a search opinion (see B‑XI, 1.1 for applications for which a search opinion is drawn up) or where the search opinion was positive (see B‑XI, 3.9). However, they may still respond to it under Rule 137(2) if they so wish, in which case they are encouraged to do so before the application moves on to the examination stage (see C‑II, 1).

Applicants can respond to the search opinion by filing amended application documents under Rule 137(2) (see C‑II, 3.1) (where amended claims are filed before publication, see A‑VI, 1.3, paragraph 3) or by filing observations on the objections raised, or even by filing both. Such amendments and observations will only be examined by the examining division if the application moves on to the examination stage.

Making a procedural request, e.g. for a consultation or for oral proceedings, or simply disagreeing with the search opinion is not a valid response if done without commenting on any of the objections raised. Where such a request or simple disagreement is the only response received by expiry of the set time limit, the application deemed to be withdrawn under Rule 70a(3). The same applies where a request is filed that cannot be granted at this stage (e.g. for a decision according to the state of the file).

If an applicant does not respond to a search opinion issued for an application for which the search report was drawn up before 1 April 2010 and the application moves on to the examination stage (see C‑II, 1 and C-II, 1.1), the examining division will issue a communication referring to the search opinion and setting a time limit for a response as the first communication under Art. 94(3) (see C‑III, 4). If the applicant does not respond to this communication in time, the application will be deemed to be withdrawn under Art. 94(4).

Where an applicant files amendments in response to the search opinion but not in the way required under Rule 137(4) (see H‑III, 2.1), the examining division may issue a communication under Rule 137(4) (see H‑III, 2.1.1) relating to these amendments, but this can only happen after the examining division has become responsible for the application (see C‑II, 1) and only if the application is one of the types listed in H‑III, 2.1.4.