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Guidelines for Examination

 
 
2.7.2
Additional criteria for admissibility of requests 

If the applicant files a reasonable number of requests related to amendments before the final date set in accordance with Rule 116(2), such requests should be admitted into the proceedings (see also H-III, 3).

If these requests or additional requests are filed after the above final date, they are late-filed and will be subject to the "clear allowability" criterion (see H-II, 2.7.1). Thus, the Division should first consider the requests before deciding on their admissibility. The mere fact that they are filed late is not per se a reason for not admitting them. This issue will normally be dealt with during oral proceedings.

If, after discussions, the Division comes to the conclusion that the late-filed requests are not clearly allowable, it should not admit them under Rule 116(2) and 137(3) on the grounds that they do not contain subject-matter which is clearly allowable, i.e. because this subject-matter clearly does not meet requirements of the EPC (where the applicant does not attend the oral proceedings, see H-III, 3.4.1H-III, 3.3.2 and E-II, 8.3.3). In the decision, reasoning is also to be given as to why the specific requirement(s) is(are) clearly not met.

As far as the criterion for admitting late-filed amendments is concerned, the Examining Division's first step should be to consider whether the claims are clearly not allowable, for example because they clearly violate the requirements of Art. 123(2). If the claims do not contain subject-matter which is clearly not allowable (i.e. they pass this first step in the examination of their admissibility), they should be admitted if they are then subsequently also found to satisfy the following criteria (T 1273/04):

– 
the amendments are clearly permissible under Art. 123(2), Art. 84, Rule 137(5) and, where applicable, Rule 139;
– 
the newly defined subject-matter constitutes a convergent development of the subject-matter which has been the subject of examination; 
– 
the subject-matter of the amended claims is clearly new. 

However, it should be borne in mind that a request filed in response to a change of the subject of the proceedings, e.g. when a further document is cited for the first time during the oral proceedings, has to be admitted under Rule 116(1) (T 951/97).