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Guidelines for Examination

 
 

6. Claims contravening Art. 123(2) or Art. 76(1)

If the claims on which the search is to be based were filed after the date of filing or under Rule 58, they do not form part of the application documents "as originally filed". Also, for Euro-PCT applications (see B‑III, 3.3.1), it may happen that amended claims form the basis for the supplementary European search. In either case, before starting the search, the examiner checks whether or not these claims introduce subject-matter that extends beyond the content of the application "as originally filed" (see also A‑III, 15). For Euro-PCT applications, this is the PCT application as originally filed.

If the claims contravene the requirements of Art. 123(2), the examiner will face one of the following situations:

(a)
if there are doubts about the objection (e.g. the amendment relies on common general knowledge and the examiner is unsure if the introduced term can be based on this) and/or the amendment does not significantly change the scope and subject of the search: the examiner searches the claims as they are. 
(b)
if there are certain individual features in the claims that clearly violate Art. 123(2): the examiner performs the search ignoring these features.
(c)
if there are substantial non-allowable amendments in the claims: the examiner may need to issue an invitation under Rule 63(1) prior to starting the search (see B‑VIII, 3(iv)). Depending on the reply to the invitation, an incomplete search report or even a declaration replacing the search report according to Rule 63 may be issued. In deciding what to include in the search and what to exclude from it, the examiner should refer to how the invention is defined in the description.

A similar problem may also occur when a divisional application is filed and the amended claims do not satisfy the requirements of Art. 76(1): the same criteria as described in steps (a) to (c) above should then be applied.

In any case, the search opinion will include an objection under Art. 123(2) or Art. 76(1) indicating the reasons for limiting the scope of the search.