Waiving the right to receive the EPO’s Rule 161 and Rule 162 Communication

Shortly after an international (PCT) patent application enters the European regional phase, the European Patent Office (EPO) issues a communication under Rule 161 and Rule 162 of the European Patent Convention (EPC). The Rule 161/162 communication sets a six-month deadline for the applicant to amend the application, submit patentability arguments, and address any outstanding claims fees. However, applicants seeking to expedite the European prosecution process may wish to waive this communication, as the six-month period can lead to unwanted delays.

In this article, we explain how to waive the Rule 161/162 communication and outline the necessary steps. We assume readers are familiar with this communication; if not, please refer to our article here.

How to waive the communication

Waiving the communication may appear straightforward. An applicant can either check the relevant box on Form 1200 when entering the European phase to explicitly waive the right or submit a signed letter to the EPO declaring the waiver.

However, it is important to note that the EPO will only proceed to the next stage without issuing the Rule 161/162 communication if the applicant has met all the requirements specified in these rules.

Actions required to validly waive the communication

What additional actions are needed to 'validly' waive the communication? Waiving the communication depends on several factors.

If the EPO has conducted an international search and raised objections, a response to the search will be mandatory. The Rule 161/162 communication would be a Form 1226AA, which requires a response. In this case, it would be necessary to submit amendments and/or arguments when entering the European phase. However, if the EPO’s search opinion is entirely positive or if another authority acted as the international search authority, submitting a response is optional.

Additionally, claims fees for each claim in excess of 15 must be paid. If the application has more than 15 claims, the applicant may reduce the claim count when entering the European phase. If the claim count is reduced to 15 or fewer, no excess claims fees are due. However, if there are still more than 15 claims, excess claims fees must be paid for the 16th claim and each subsequent claim. These fees are typically addressed upon entry into the European phase.

Provided that any mandatory response is submitted and all additional claims fees are paid, the waiver should be considered valid.

If any required actions (e.g. payment of claims fees or submission of a mandatory response) are missing, the waiver will be invalid, and the EPO will issue the Rule 161/162 communication, resulting in the standard six-month processing period.

For those seeking to further expedite the process, options like acceleration under the PACE scheme at the EPO are available. If an application enters the European phase before the 31-month deadline from the earliest effective PCT filing date, the applicant can request early processing. This allows the EPO to begin the process immediately instead of waiting for the 31-month deadline to expire.

Waiving the Rule 70(2) Communication

If the Rule 161/162 communication is waived and a Patent Office other than the EPO conducted the international search, the EPO will issue a supplementary search report and a R70(2)/R70a(2) communication, giving the applicant six months to confirm whether they wish to proceed and to respond to any objections raised in the search opinion. This communication can also be waived in which case the EPO transmits the search report without a search opinion, and the Examining Division takes over to issue the examination report instead of the R70(2)/R70a(2) communication—potentially accelerating prosecution by another six months.

Conclusions

Waiving the right to the R161/R162 communication may seem easy, but it is crucial for applicants to ensure that all required actions are completed in due course, typically upon European phase entry.

Author: Julia Li

At Hindles, we have extensive experience of navigating European patent procedures. If you have any questions about this topic or patents in general, please do not hesitate to contact us.