3.3.1 Earlier filed amendments or comments 

A reply to the communication under Rule 161(1) may not be necessary where amendments or observations have already been filed that can be considered to be a valid reply. This is the case in the following situations:

(i)If the applicant has filed new amendments and/or comments upon entry into the regional phase before the EPO, provided that 

– the applicant has indicated on entry into the European phase that such amendments and/or comments are to form the basis for further prosecution of the application (see E‑IX, 2.1.1), and

– they constitute a valid response (see B‑XI, 8).

(ii)If the applicant filed amendments according to Art. 19 PCT and/or Art. 34 PCT in the international phase, and if the EPO prepared the WO‑ISA or SISR but no IPER (either because the applicant did not demand PCT Chapter II or because the IPEA was an office other than the EPO), then these amendments are considered to constitute a response to the WO‑ISA or SISR, provided that the applicant

– has indicated on entry into the European phase that these amendments are maintained, 

– has provided a copy of the amendments under Art. 34 PCT, filed with the IPEA other than the EPO, as well as any necessary translations in the language of the proceedings.

If amendments have been filed under Art. 19 PCT or Art. 34 PCT and have been taken into consideration in the drawing up of an IPER by the EPO acting as IPEA, these are not considered to constitute a response to the IPER as required by Rule 161(1); in these cases, the applicant is required to respond to the IPER within the six-month period according to Rule 161(1).

If the requirements of Rule 137(4) were not fulfilled for amendments already filed, the required indications are to be made in reply to the Rule 161(1) communication (see E‑IX, 3.4).

In cases (i) and (ii) above, no communication under Rule 161(1) and Rule 162 is issued if applicants have explicitly waived their right to these and have already paid any claims fees due (see E‑IX, 3.2).