5.4.2 Amendments filed to meet an objection

In T 141/04 the board held that R. 86(4) EPC 1973 does not apply if a feature originally disclosed in the description is added to an originally-filed claim in order to meet an objection raised. It noted that the Guidelines are in line with the jurisprudence of the boards of appeal. The board noted that, notwithstanding the applicant's right to introduce subject-matter from the description into the claims, the exercise of such a right is not without restrictions, as indicated by Art. 123(1) EPC 1973 and R. 86(3) EPC 1973. Therefore, the examining division could possibly have exercised its discretion under R. 86(3) EPC 1973, last sentence, to refuse to admit this request, as it was filed for the first time during the oral proceedings before the examining division and apparently comprised unsearched subject matter. As such, the request could not reasonably be considered as clearly allowable, this latter being a usually applied requirement for admissibility of a request at such a late stage of the proceedings. On the contrary, the potential requirement for an additional search would have represented an unreasonable protraction of the examination procedure.

In T 274/03 the board noted that it was clear that post-search "switching" of subject-matter clearly implied a significant change in the nature of the subject-matter being claimed which was not normally comparable to the addition of features taken from the description to further define an element that was already a feature of the original main claim. The board was of the opinion that an amendment amounting to the restriction of an original main claim by including complementary features from the original description into the claim represented an admissible reaction of an applicant vis-à-vis an objection against the patentability of the unamended claim and did not constitute an abuse of the system of the nature which R. 86(4) EPC 1973 was introduced to prevent (T 377/01 and T 708/00). This type of amendment should not therefore in general be judged as contravening the requirements of the rule, even though an additional search could be required. In this context it was to be observed that the implicit finding of lack of unity between the originally claimed and later claimed subject-matter, which was a prerequisite for an objection under R. 86(4) EPC 1973, had to, with amendments of the type under consideration here, be a posteriori. The Guidelines for Examination in the EPO made it clear however that this form of objection to lack of unity should be the exception, with benefit of the doubt being given to the applicant (see also Guidelines C-III, 7.7 - April 2010 version and also T 2334/11).

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