EPO Extends Period for Mandatory Response to PCT Reports

This article was included in our Winter 2010 edition of Inside IP magazine.

One of the significant rule changes taking effect on 1 April 2010 was an amendment of Rule 161 EPC to require mandatory responses to PCT reports (i.e.  Written Opinions or International Preliminary Reports on Patentability) issued by the EPO during the international phase.  The term for filing a response currently is only one month from notification of a communication from the EPO, which typically issue within two months of filing the European application.  No extensions are available, although further processing can be used if a fee is paid. 

Newly published Administrative Council Decision CA/D 12/10 further amends Rule 161 EPC to extend the term for filing a response to six months from the EPO communication.  In addition, Rule 162 EPC is amended to extend the period for paying excess claims fees to the same date of six months from the EPO communication.

The new rules will apply to Euro-PCT applications where a communication under current Rules 161 and 162 EPC has not been issued before 1 May 2011. 

It is worth noting that the Rule 161/162 response remains the only opportunity for applicants to amend the application and claims of their own volition; later amendments require the Examiner’s discretion. 

We welcome this change, which allows greater opportunity to progress applications efficiently.

29 Nov 2010

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