WAIVING RULE 161 AND 162 COMMUNICATIONS AT THE EPO
The time period for responding to the Rule 161/162 communication (issued shortly after entry into the European regional phase) is six months. In certain situations, this relatively long period may introduce an unwanted delay in prosecution. This information sheet explains how the delay may be avoided by waiving the right to the communication under Rules 161 and 162.
Shortly after an international application enters the European regional phase the EPO issues a “communication under Rules 161 and 162”. The action that is required in response to such a communication depends on who conducted the international search and, in some cases, whether or not amendments were filed on entry into the European regional phase:
The time period for reply is six months.
Whilst this extended deadline may be useful to applicants having to file a mandatory response to the international search opinion, it may cause an undesired delay in prosecution for cases where no substantive response is necessary.
There has also been the suggestion (although it is not entirely clear) that, in cases where a Rule 161/162 communication is issued (i.e. because it has not been waived), an early response does not progress the prosecution of the application but that the EPO still waits for the expiry of the 6 month period set by the Rule 161/162 communication.
In instances where such a delay is unwanted, the applicant may wish to waive their right to the communication under Rules 161 and 162. Applicants who would like to expedite prosecution may also wish to request accelerated search and/or examination at the EPO using “PACE”, as discussed in our separate information sheet “UK & European Patents- Accelerated Prosecution”.
To waive the right to the communication under Rules 161 and 162 EPC the applicant must, upon entering the European phase:
If you would like further advice, please contact us.
This information is simplified and must not be taken as a definitive statement of the law or practice.