3. The communication according to Rule 161
3.1 Applications for which a supplementary European search report is prepared
Where the EPO has not drawn up an international search report (as ISA) or a supplementary international search report (as the authority charged with the supplementary international search (SISA)), the application is subject to a supplementary European search under Art. 153(7) (see B‑II, 4.3.2); a supplementary European search report and search opinion are issued accordingly (see B‑XI, 1 and B-XI, 2). The first communication is then issued as in C‑III, 4.
In such cases, promptly after entry into the European phase, the applicant is invited to amend the application within a period of six months (see the notice from the EPO dated 29 June 2010, OJ EPO 2010, 406, and the notice from the EPO dated 15 October 2009, OJ EPO 2009, 533). All amendments and comments filed within this period will be taken into account in drawing up the supplementary European search report and the search opinion. The supplementary European search will be based on the last set of claims filed up to expiry of this period for which any claims fee due is paid.
The applicant may, but is not required to, reply to the WO‑ISA, IPER or SISR drawn up by an authority other than the EPO, normally in the form of amendments and/or comments filed with Form 1200 or in response to a communication under Rule 161(2). If the applicant does reply to the WO‑ISA, IPER or SISR, the supplementary search report and the search opinion will be drawn up taking this reply into account (see B‑II, 4.3 and B‑XI, 2).
For proceeding directly to supplementary European search without having to wait until the six-month time limit under Rule 161(2) expires, applicants may explicitly waive their right to a communication pursuant to Rules 161(2) and Rule 162. No communication under Rule 161(2) or Rule 162 is issued if, in addition to the waiver, the applicant has already paid any claims fees due (see the notice from the EPO dated 5 April 2011, OJ EPO 2011, 354). If not, the communication will be issued and the application will be processed only after expiry of the six-month period, even if a request under the PACE programme has been filed (see E‑VIII, 4).
When preparing the first communication in examination for such cases, the examiner may have to consider the international search report (with the corresponding International Preliminary Report on Patentability (IPRP) or the International Preliminary Examination Report (IPER)), any supplementary international search report (SISR), any supplementary European search report (with the corresponding search opinion) prepared by the EPO (see B‑II, 4.3) and any reply filed in response thereto (see C‑II, 3.1).