I have been doing some detective work in response to a new R.161 EPC communication. I have found out the following (disclaimer: procedure appears to be still in limbo at the EPO at the moment so use any common sense you have available; the following may be liable to change):
There are 3 versions of the new R.161 EPC Communication: – EPO Form 1226A; EPO Form 1226B; and EPO Form 1226C. Look in the lower left-hand corner for the number.
- EPO Form 1226A is issued if there has been a negative opinion by the EPO and no amendments or comments have been filed on regional phase entry. A response to this form within 1 month is mandatory (i.e. or else the application is deemed withdrawn) and your attention is drawn to this on the form.
- EPO Form 1226B is issued if there has been a negative opinion by the EPO and amendments or comments have been filed on regional phase entry. A response to this form within 1 month is voluntary (i.e. the application is NOT withdrawn if you do not response). This is indicated by the wording “you may comment….”.
- EPO Form 1226C is issued in other cases (e.g. non-EPO ISA, positive opinion). A response to this form within 1 month is voluntary (i.e. the application is NOT withdrawn if you do not response). This communication resembles the old R.161EPC communication.
This means that the situations where a reply to the R.161 EPC Communication is required is determined by the EPO and indicated by the form that is sent.
What Counts as “Amendments or Comments”?
For this we look at section C VI 3.5.1 of the revised Guidelines for Examination. This sets out a number of situations that I will summarise below. As always, take the wording of the Guidelines, rather than my summary, as legal basis (i.e. READ the section at the above-link).
“New amendments and/or comments”
From a conversation with a formalities officer and the wording of the forms, it appears (thus far) that any amendments filed on European regional phase entry count as a response under R.161(1)EPC. For example, a case where the claims were amended to reduce excess claims fees resulted in a “B” form that does not require a mandatory reply.
The revised Form 1200 contains two check boxes for each of Chapter I or Chapter II entry respectively indicating: 1) “unless replaced by the amendments enclosed” and 2)”Comments on the written opinion established by the EPO as the International Searching Authority and/or observations are enclosed”. From the wording of the Guidelines (“and/or”) it would appear that either count as a response under R.161(1)EPC. The Guidelines imply that at least one of the check boxes needs to be checked to avoid an “A” communication. This makes sense at a formalities level.
I am told that some version of the EPOnline form have not been updated yet to include the latter checkbox; however, in this case the attaching of amendments to the online Form 1200 and the checking of the old checkbox indicating their presence may be enough to avoid an “A” communication.
“New” is mentioned in the Guidelines but not defined. Would attaching the existing claims as “amendments” bypass the “A” communication?
When a Response is Required…
From the position of the EPO so far, it would appear that the response to the R.161EPC communication is treated as a formality rather than a substantial matter. Hence, it would appear (untested!) that any comment or amendment filed in response to the “A” communication would tick the formalities officer’s boxes (so-to-speak).
Downside of Not Responding (Substantially)
The Guidelines state that “the Examining Division will issue at least one communication according to Art.94(3) and Rule 71(1),(2) in subsequent examination proceedings”. It would seem common sense to state that a substantial response early in the procedure (on entry / in reply to the R.161 EPC communication) would at least allow two substantive replies before Oral Proceedings (and possibly paint you in a more favourable light).
Additionally, new Rule 137(2) EPC only allows you to amend of “your own volition” in reply to the R.161 EPC communication. If you wait until Examination to file a substantive amendment there is a risk that the Examining Division will disallow the amendment.
R.137(4) EPC – Basis for Amendments
The EPO seem quite hot on issuing one of these. My guess it will occur when the Examining Division get hold of the case without too much thought. I would recommend indicating basis when filing amended claims on regional phase entry or filing such basis in response to any R.161 EPC communication to avoid a later R.137(4)EPC communication (and its one month time limit).