Rule 70a EPC: Response to the extended European search report

Text of Rule 70a EPC

In plain English

The European search report comes with a search opinion, together the extended European search report. If the opinion raises objections, Rule 70a obliges you to answer them, either with amendments, with arguments, or both.

The reply is due within the period for requesting examination under Rule 70(1): six months from the date the European Patent Bulletin mentions publication of the search report. If you had already requested examination before receiving the search report, as is usual for Euro-PCT applications with a supplementary search, the EPO sends a Rule 70(2) communication asking whether you want to proceed, and the reply is due within that period instead (Rule 70a(2)).

No reply is needed where the opinion is positive, or where there is no search opinion (Guidelines B-XI, 8). You can still reply voluntarily.

Not everything counts as a reply. A bare request for oral proceedings or a consultation, a simple statement of disagreement, or a request for a decision on the file, without comments on the objections, is not a valid response, and the application is deemed withdrawn.

This is also the first point at which you can amend of your own volition under Rule 137(2), and the examining division takes the reply into account when it writes its first communication. A careful reply here often shortens examination by a whole round.

If the period is missed, the loss of rights can be remedied by further processing: pay the fee within two months of the EPO's communication and file the reply.

Deadlines and fees

Common objections

Novelty and inventive step objections in the opinion

Answer each one. Amend the claims with features that have a clear basis, give problem-solution arguments, and indicate the basis of each amendment as Rule 137(4) requires.

Clarity and formal objections

Deal with these at the same time, so that the first examination communication can focus on the remaining substantive issues.

Drafting and prosecution tips

• Use the reply to put your best claim set forward; this is your one free opportunity to amend before examination starts.
• Address every objection, even briefly. A reply that ignores one can still prompt a further communication.
• If PACE or speed matters, a thorough reply here is the best way to reach a Rule 71(3) communication quickly.