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Guidelines for Examination

 
 
3.3
Objection under Rule 43(2) or Rule 137(5)

Where the application was considered not to comply with Rule 43(2) when the European or supplementary European search report was prepared, this may have led to the issuing of a search report restricted to one independent claim in each category, or to a sub-group of independent claims in each category where these complied with Rule 43(2). Such a limitation of the search report would have been in accordance with Rule 62a(1) (see B-VIII, 4.1 and B-VIII, 4.2). Where an this unjustified plurality of independent claims in the same category persists after the search (see B-VIII, 4.1 and 4.2) in the application under examination, an objection is raised under Rule 43(2) (for applications where a search opinion accompanies the search report, this objection may already have been raised in the search opinion). If no Rule 62a(1) invitation was sent at the search stage, the Examining Division can still raise an objection under Rule 43(2). If the application is a Euro-PCT application not subject to the preparation of a supplementary European search report (see B-II, 4.3.1), an objection under Rule 43(2) may also arise in examination.

When an objection under Rule 43(2) arises, the applicant is invited to amend the claims appropriately. If the search was restricted in accordance with Rule 62a, and the Examining Division upholds the objection under Rule 43(2) despite possible counter-arguments provided by the applicant in his response to the invitation under Rule 62a(1) (see B-VIII, 4.2.2) or to the search opinion under Rule 70a (see B-X, 8), the claims must be amended in such a way as to result in the removal of all subject-matter excluded from the search (Rule 62a(2)) and the description amended accordingly (see H-II, 5).

If in reply to the reasoned objection (raised or confirmed in a communication from the Examining Division) the additional independent claims are maintained and no convincing arguments are presented that one of the situations referred to in sub-paragraphs (a) to (c) of Rule 43(2) applies, the application may be refused under Art. 97(2).

If the application is amended to provide a set of claims complying with Rule 43(2), but containing one or more claims directed to subject-matter excluded from the search in accordance with Rule 62a(1), an objection under Rule 137(5) arises and the application may also be refused for this reason under Art. 97(2) (see also H-II, 6 and 6.1). However, before such a decision can be taken, it will be necessary to allow the applicant to comment according to Art. 113(1) on the underlying issue of whether or not the claims in respect of which the invitation under Rule 62a(1) was sent did in fact comply with Rule 43(2).

The burden of proof concerning an objection under Rule 43(2) is initially shifted onto the applicant, i.e. it is up to the applicant to argue convincingly why additional independent claims can be maintained. For example, the mere statement that the number of claims is the minimum necessary to provide the overall scope of protection which the applicant seeks is not a convincing argument (see T 56/01, Reasons 5).

Where the application also lacks unity of invention, the examiner may raise an objection under either Rule 43(2) or Art. 82 or under both. The applicant cannot contest which of these objections has priority (see T 1073/98, Reasons 7.2).

References

Rule 43(2)