3.1 Applications for which a supplementary European search report is prepared 

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 EPO 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).

Once 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 Rule 70a(2) 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".

If any deficiencies are noted in the search opinion, applicants will be required under Rule 70a(2) to respond to the objections made ("mandatory response"). If they do not submit a substantive reply to such a communication under Rule 70a(2), their application will be deemed withdrawn (see B‑XI, 8). The loss of rights can be remedied with further processing. 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).

To ensure the waiver is effective, applicants must not pay any claims fees by automatic debit order as they will then not be debited (and thus considered paid) until the last day of the six-month period under Rule 162(2). Instead, they must already pay them on entry into the European phase or on effecting early entry into the European phase.

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).