Concept of "clear allowability"
In examination procedure, the Divisionexamining division
will apply the criterion of "clear allowability" in exercising its discretion under Rule 137(3)
for treating requests filed late during the proceedings without proper justification (T 153/85
Late-filed claims will only be admitted into the proceedings if they are clearly allowable. This means that it must be immediately apparent to the Divisionexamining division that the amendments successfully address the issues raised without giving rise to new ones (prima facie assessment).
For example, late-filed requests will not be admitted if they do not clearly meet the requirements under Art. 123(2)
or Art. 84
. Likewise, late-filed requests may be rejected if the newly defined subject-matter does not constitute a convergent development of the subject-matter which has been the subject of examination (for a definition of convergence, see H-III, 22.214.171.124)
When ascertaining whether or not the claims are clearly allowable, the Divisionexamining division takes into account whether the late-filed requests are accompanied by reasons explaining why the amendments have been made and how they are intended to overcome the objections raised.
If, after discussions, the Divisionexamining division
comes to the conclusion that the late-filed requests are not clearly allowable, it should reject them under Rule 116(2)
and Rule 137(3)
on the grounds that they do not contain subject-matter which is clearly allowable, i.e. because the subject-matter does not clearly meet the requirements of the EPC (for cases where the applicant does not attend the oral proceedings, see H‑III, 3.3.2
, and E‑III, 8.3.3
). In the decision, reasoning is also to be given as to why the specific requirement(s) for allowability is (are) not met.
The "clear allowability" criterion is generally also applied to patent proprietors' late-filed requests in opposition proceedings (see E-VI, 2.1, and E-VI, 2.2; see also T 98/96 with regard to opposition appeal proceedings).