On preparing a request to enter the European regional phase from an international application, one of the key questions to ask is whether the EPO was the international searching authority (ISA). If they were, the written opinion of the ISA, if it raises objections, will need to be addressed. The first opportunity to do this, if international examination was not requested, is in response to the communication under Rules 161 and 162 EPC, which issues shortly after European regional phase entry. Rule 161(1) EPC states that the applicant will be given an "opportunity to comment on the written opinion [...] and, where appropriate, invite him to correct any deficiencies". If no response is filed to such a communication, the application is deemed withdrawn.
|Frank Zappa's lovely white teeth. Source here.|
An important point to note, however, is that examiners are not always reasonable. A safety net in any response filed at the EPO is therefore always advisable in the form of a standing request for oral proceedings under Article 116 EPC in the event the Examining Division (ED) is not minded to allow the application. The ED cannot then issue a decision under Article 97(2) to refuse the application until after issuing a summons to oral proceedings and, if necessary, holding oral proceedings at which a final decision is made.
A tricky question is how many communications under Article 94(3) EPC can the ED issue before they take things further. Article 94(3) merely states that the applicant shall be invited "as often as necessary" to file observations and amend the application. The interpretation of this can vary widely. Sometimes the ED will string things out for several communications, particularly if the applicant is making efforts each time to resolve the objections. In some cases, however, and particularly if the applicant does not seem to be making much of an effort, the ED can issue a summons after just one communication, or even in some cases as a first communication. Of course, if a standing request for oral proceedings is not on file, this can instead be a decision to refuse, which can take the applicant by surprise. See an earlier post here for a cautionary tale of what can happen if an applicant does not take objections by the ED seriously and does not have such a request on file.