Rule 161 has been amended so as to provide
for a mandatory response to the PCT report in case the EPO was ISA. In view
of the PCT time line, amended Rule 161 will be relevant for PCT reports that
are received now by the applicant or his agent during the international
phase, which may very well be somebody else than the EP attorney who will
handle the national phase before the EPO. The following is advisable:
Upon receipt of the PCT report members should (seek instructions from their
clients to) prepare the response to be submitted upon or shortly after EP
national phase entry, as the time limit given in Rule 161 is very short:
just one month. So, only starting to prepare the response upon receipt of
the Rule 161 communication may be too late.
epi members in private practice should advice their foreign associates that
instructions for EP national phase entry should be accompanied by
instructions for reply to the PCT report, as again, the Rule 161 time limit
is too short to only start preparing the response upon receipt of the Rule
161 communication. So, also these foreign associates should change their way
of working.
Information forwarded to the Editorial Committee by Leo Steenbeek, Philips,
Eindhoven, The Netherlands
