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Guidelines for Examination

 
 
7.4.2
Amended main/single request filed with the appeal 

If amendments made to the independent claims clearly do not meet the requirements of Art. 123(2), interlocutory revision should not be granted, but the Division should send the file to the Boards of Appeal. If, on the other hand, there are doubts as to whether the amendments meet the requirements of Art. 123(2) or the amendments clearly meet the requirements of Art. 123(2), the Division should check whether the amended claims overcome the ground(s) for refusal as well as all previous objections to patentability to which the applicant has had an opportunity to respond. If this is not the case, interlocutory revision should not be granted, but the Division should send the file to the Boards of Appeal.

If the amendments clearly overcome the grounds for the refusal, interlocutory revision should be granted even if further new objections arise. This is because the applicant has the right to examination in two instances (see T 219/93).

Important criteria are (see T 47/90):

1. 
the text is no longer the same (or equivalent) 
2. 
substantial amendments have been made. 

Normally, amendments which do not change anything vis-à-vis the documents already cited in the decision (still not novel, still not inventive) are not regarded as "substantial", i.e. necessitating an interlocutory revision. The examiner has the discretion to decide whether, in each particular case, the amendments to the claims are such that examination has to be continued on a new basis, e.g. where a completely new line of inventive-step argumentation would be necessary.

In making this decision, not only the grounds mentioned in the decision should be taken into account but also all previous objections to patentability to which the applicant has had an opportunity to respond (e.g. objections mentioned in an obiter dictum of the decision, or objections mentioned in previous communications, during personal consultation or at oral proceedings). This is in the interest of procedural efficiency and to the benefit of the applicant (no second appeal fee necessary).

Examples: 
(a)
The applicant has included a wording that has already been suggested by the examiner, the new claims are ready for grant but the description needs to be adapted: interlocutory revision must be granted since the grounds for the refusal have been overcome. 
(b)
Refusal for lack of novelty only. New claims are clearly novel but not inventive. The question of inventive step had not been raised in the decision or in the previous procedure: there must be an interlocutory revision.
(c)
Refusal for lack of novelty. New claim 1 filed which includes a feature from dependent claim 3. This claim had already been discussed in the decision and was considered not to be inventive: no interlocutory revision.
(d)
Refusal for lack of novelty over D1. New claim 1 filed which includes a feature from the description. This feature had not been previously discussed per se; however, it is clearly disclosed in D1: no interlocutory revision since the ground for refusal - lack of novelty over D1 - has not been overcome.
(e)
Refusal for lack of inventive step vis-à-vis D1 and D2. New claims filed which include a feature from the description. This feature had not been previously discussed, but is clearly disclosed in D1 and would not need a (major) change in the argumentation given: no interlocutory revision since the ground for refusal - lack of inventive step vis-à-vis D1 and D2 - has not been overcome.
(f)
Refusal for lack of inventive step vis-à-vis D1 and D2. New claim filed which includes five new features from the description. These features have not been previously discussed. The examiner notes that although these features are disclosed in D2, the lack-of-inventive-step argumentation would have to be substantially revised: interlocutory revision should be made, since (i) the applicant has made substantial amendments to overcome the objections raised in the decision and (ii) the line of argumentation has to be substantially revised.