EPO: ISA, SISA oder IPEA

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DerOptimist
Posts: 1
Joined: Fri May 27, 2022 2:11 pm

EPO: ISA, SISA oder IPEA

Post by DerOptimist » Fri May 27, 2022 2:43 pm

Hello,

The 6-month period is ending soon and I would first like to only issue an opinion in response to the Rule 161(1) communication, in which I try to refute the citations of the international search with arguments. Only in the event that I cannot convince the examiners would I like the possibility of restricting the claims, if necessary with a patent attorney. Is this way of proceeding possible? Or will I have any disadvantages?

Why I write about possible disadvantages results from:

https://www.epo.org/applying/internatio ... 5_4_3.html

Especially paragraph 5.4.014 After the six-month period has expired, the options for changing the registration are limited...


EPO / Innovation Networks
Posts: 724
Joined: Wed Nov 12, 2014 3:36 pm

Re: EPO: ISA, SISA oder IPEA

Post by EPO / Innovation Networks » Tue May 31, 2022 5:23 am

Dear DerOptimist,
The possibilities to make amendments in response to the Rule 161(1) EPC communication are clarified in the Euro-PCT Guide for applicants Part 2, depending on whether a supplementary European search is carried out or not the procedure differs:

Amendments and the Rule 161/162 communication if a supplementary European search is carried out
Amendments and the Rule 161/162 communication if no supplementary European search is carried out

It is at the examining division's discretion whether to accept any further amendment at a later stage of the proceedings (Rule 137(3) EPC.

For a specific file please address the EPO's Customer Enquiries on support@epo.org

Kind regards,
EPO Customer Services


Kimbermoore2
Posts: 10
Joined: Mon Jan 23, 2023 7:20 am

Re: EPO: ISA, SISA oder IPEA

Post by Kimbermoore2 » Fri Feb 17, 2023 10:58 am

Yes, it is possible to proceed in the way you described. You can respond to the Rule 161(1) communication by providing arguments to refute the citations of the international search without making any amendments to the claims. If the examiner is convinced by your arguments and finds the claims to be allowable, then no further action is necessary. However, if the examiner still finds the claims to lack novelty or inventive step, you can consider amending the claims to overcome the objections. This can be done within the 6-month period or you can request an extension of time if needed.

There are no disadvantages to responding to the Rule 161(1) communication with arguments first, before amending the claims. In fact, it can be a good strategy to see if the examiner is willing to accept the claims as they are before making any amendments. However, keep in mind that if you wait until the end of the 6-month period to amend the claims, you may not have enough time to fully address any objections that may arise. It is always best to respond to communications from the patent office as soon as possible to ensure that you have enough time to address any issues that may arise.


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