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Guidelines for Examination

 
 

2.6 Further requests for amendment after approval

Once the applicant has approved the text communicated to him pursuant to Rule 71(3), by paying the fees and filing the translation of the claims, further requests for amendment will only exceptionally be admitted under the discretionary power of the Examining Division given by Rule 137(3). A clear example of an admissible request is where the applicant files separate sets of claims for designated States that made reservations under Art. 167(2) EPC 1973 (see H‑III, 4.4) or for which prior national rights exist (see H‑III, 4.5). Similarly, it is appropriate to admit minor amendments which do not require re-opening of the substantive examination and which do not appreciably delay the issue of the decision to grant (see G 7/93).

If amendments are filed and do not comply with the requirements of Rule 137(4), the examiner may send a communication under Rule 137(4) (see H‑III, 2.1.1).

When exercising its discretion under Rule 137(3) an Examining Division must consider and balance the applicant's interest in obtaining a patent which is legally valid in all of the designated states and the EPO's interest in bringing the examination procedure to a close by the issue of a decision to grant the patent. The criteria for exercising its discretion under Rule 137(3) at this late stage are whether the request can be decided on in a reasonable period of time, and whether the amendments are allowable. If either of these criteria is not satisfied, the request for amendments should be refused by the Division in the exercise of its discretion according to Rule 137(3).

Refusal of amendments must be reasoned, and both Art. 113(1) and Art. 116(1) must be observed (see C‑V, 4.7.1). It must be shown that the conditions defined in G 7/93 are not met. This means that arguments must be given as to why the amendments are not minor in nature but in fact necessitate resuming substantive examination while considerably delaying the issue of a decision to grant the patent.

However, once the decision to grant is handed over to the EPO's internal postal service for transmittal to the applicant, the Examining Division is bound by it (see G 12/91) and can only amend it to the limited extent provided for in Rule 140 (see H‑VI, 5.1). In examination procedure, this corresponds to the date on which the centrally generated Form 2006, "Decision to grant a European patent pursuant to Art. 97(1) EPC", is forwarded to the postal service. This date is shown at the bottom right-hand corner of Form 2006. The Examining Division is no longer competent to decide on a request for amendments or corrections under Rule 139 if the filing of the request and the completion of the proceedings occur on the same date (T 798/95).