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Guidelines for Examination

 
 
Table of Contents - Guidelines for Examination
Part H Amendments and Corrections

Part H

Amendments and Corrections

 

Contents
Chapter I – The right to amend
Chapter II – Admissibility of amendments – general rules
1.
Introduction
2.
Admissibility during examination procedure
2.1
Before receipt of the search report - Rule 137(1)
2.2
After receipt of the search report - Rule 137(2)
2.3
After receipt of the first communication - Rule 137(3)
2.4
At an advanced stage of the proceedings
2.5
Amendments filed in reply to a Rule 71(3) communication
2.5.1
Criteria for admitting such amendments
2.5.2
Amendments filed in reply to Rule 71(3) invitation admitted
2.5.3
Amendments filed in reply to Rule 71(3) invitation rejected
2.5.4
Exceptional case where amendments must be admitted
2.5.5
Rule 137(4) applies to amendments filed at this stage
2.6
Further requests for amendment after approval
2.7
Late-filed requests after summons to oral proceedings in examination
2.7.1
Concept of "clear allowability"
2.7.2
Additional criteria for admissibility of requests
3.
Admissibility in opposition procedure
3.1
Amendments in reply to the notice of opposition
3.2
Amendments not related to the grounds of opposition
3.3
Amendments occasioned by national rights
3.4
Insistence on unallowable amendments
3.5
Late-filed requests in opposition proceedings
4.
Limitation procedure
5.
Amendments required by Rule 62a and/or Rule 63
6.
Amendments directed to unsearched matter - Rule 137(5)
6.1
Rule 62a and/or Rule 63 cases
6.2
Subject-matter taken from the description
7.
Amendments in case of non-unity
7.1
Restriction to a single, searched invention
7.2
Restriction to unsearched subject-matter
7.3
Not restricted to single invention or claims amended
7.4
Euro-PCT cases
7.4.1
Where the EPO does not perform a supplementary search
7.4.2
Where the EPO performs a supplementary search
Chapter III – Admissibility of amendments - other procedural matters
1.
Introduction
2.
Procedure for amendments to documents
2.1
Indication of amendments and their basis under Rule 137(4)
2.1.1
Rule 137(4) communication and response thereto
2.1.2
Amendments withdrawn or superseded in the Rule 137(4) period
2.1.3
Rule 137(4) and oral proceedings
2.1.4
Transitional provisions relating to Rule 137(4)
2.2
Amendment by submitting missing documents or by filing replacement pages
2.3
Amendments using copies
2.4
Amendments made by the EPO at the request of a party
2.5
Withdrawal of amendments/abandonment of subject matter
3.
Auxiliary requests
3.1
General principles
3.1.1
Sequence of requests
3.1.2
Obligation to give reasons
3.1.3
Neither main nor auxiliary requests allowable
3.1.4
Indication of amendments made in main and/or auxiliary requests in examination proceedings
3.2
In the search phase
3.3
In examination proceedings
3.3.1
Admissibility of auxiliary requests
3.3.1.1
Criteria for admissibility of auxiliary requests
3.3.1.2
Timeliness and structure of auxiliary requests
3.3.2
Preparing the decision
3.3.3
Complete text for auxiliary request not yet available
3.3.4
Complete text for auxiliary request available
3.3.5
Applicant does not approve the text proposed for grant
3.4
In opposition proceedings
3.4.1
Written procedure
3.4.2
Oral proceedings
3.5
In limitation proceedings
3.5.1
General principles
3.5.2
Written procedure
3.5.3
Oral proceedings
4.
Different texts in respect of different Contracting States
4.1
Dealing with different texts in examination
4.2
Different text in respect of the state of the art according to Art. 54(3) and Art. 54(4) under EPC 1973
4.2.1
Art. 54(3) and (4) EPC 1973 in opposition proceedings
4.3
Different text where a partial transfer of right has taken place pursuant to Art. 61 or Rule 78
4.3.1
Different text where a partial transfer of right takes place pursuant to Art. 61 in examination proceedings
4.3.2
Different texts where a transfer of the patent in respect of certain designated states takes place in opposition proceedings
4.3.3
Opposition cases with different texts where a partial transfer of rights by virtue of a final decision pursuant to Art. 61 and Rule 18(1) and Rule 18(2) took place in examination proceedings
4.4
Different text where a reservation has been entered in accordance with Art. 167(2)(a) EPC 1973
4.5
Different text where national rights of earlier date exist
5.
Calculation of claims fees
Chapter IV – Allowability of amendments - Art. 123(2) and Art. 123(3)
1.
Introduction
2.
Allowability of amendments under Art. 123(2)
2.1
Basic principle
2.2
Field of application of Art. 123(2)
2.3
Content of the application as "originally" filed – general rules
2.3.1
Features described in a document cross-referenced in the description
2.3.2
Missing parts of the description or missing drawings filed after the date of filing
2.3.3
Claims filed after the date of filing
2.3.4
Sequence listings filed after the date of filing
2.3.5
Priority documents
2.3.6
Cases in limitation proceedings where the application documents as filed are no longer available
2.3.7
Citation of prior art in the description after the filing date
2.3.8
Clarification of inconsistencies
2.3.9
Trademarks
2.4
Content of the application as "originally" filed - special applications
2.4.1
Applications filed by reference to an earlier application
2.4.2
Divisional applications
2.4.3
Applications resulting from a decision under Art. 61
2.4.4
International applications
2.5
Assessment of "added subject-matter" – examples
3.
Allowability of amendments under Art. 123(3)
3.1
Basic principles
3.2
Field of application
3.3
Protection conferred by the patent as granted
3.4
Version of the granted patent to be considered
3.5
Assessment of impermissible extension of the protection conferred
3.6
Conflicts between Art. 123(2) and Art. 123(3)
3.7
Conflicts between Art. 123(3) and other requirements of the EPC
4.
Compliance of amendments with other EPC requirements
4.1
General principles
4.2
In examination proceedings
4.3
In opposition proceedings
4.4
In limitation proceedings
4.4.1
Art. 84
4.4.2
Examination of the description and/or drawings
4.4.3
Points to be disregarded
Chapter V – Allowability of amendments - examples
1.
Introduction
2.
Amendments in the description
2.1
Clarification of a technical effect
2.2
Introduction of further examples and new effects
2.3
Supplementary technical information
2.4
Revision of stated technical problem
2.5
Reference document
2.6
Alteration, excision or addition of text in the description
3.
Amendments in claims
3.1
Replacement or removal of a feature from a claim
3.2
Inclusion of additional features
3.2.1
Intermediate generalisations
3.3
Deletion of part of the claimed subject-matter
3.4
Broadening of claims
3.5
Disclosed disclaimer
4.
Disclaimers not disclosed in the application as originally filed
4.1
The subject-matter to be excluded is not disclosed in the application as originally filed (so-called undisclosed disclaimers)
4.2
The subject-matter to be excluded is disclosed in the application as originally filed
5.
Amendments to drawings
6.
Amendments derived from drawings
7.
Changes in claim category
7.1
Product claim to use claim
7.2
Product claim to method claim
7.3
Method claim to product claim
7.4
Method claim to use claim
8.
Changes in the title
Chapter VI – Correction of errors
1.
Introduction
2.
Errors in bibliographic data
3.
Errors in publication
4.
Corrections of errors in application and patent documents during proceedings
4.1
Admissibility of corrections
4.2
Allowability of corrections
4.2.1
Correction of description, claims and drawings
4.2.2
Missing parts of description and missing drawings filed as corrections under Rule 139
4.3
Examples
5.
Correction of errors in decisions and related application and patent documents
5.1
Admissibility of corrections
5.2
Allowability of corrections
5.3
Correction of the translations of the claims