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Guidelines for Examination

 
 

3.2 Amendments not related to the grounds of opposition

If the proprietor proposes amendments to the patent in reply to the grounds of opposition and the Opposition Division intends to maintain the patent in amended form, pursuant to those grounds, other amendments, not related to the grounds of opposition (e.g. corrections, clarifications), may be allowed provided that the patent thus amended still fulfils the requirements of the EPC and that the amendments are considered necessary and appropriate. In particular, if one part of a claim has been amended, it may be necessary or appropriate to amend other parts of the claim as well.

Moreover, where a "clarification" can be considered as a limitation of the claim, it would be admissible under Rule 80 and could form the basis for maintaining the patent in amended form, provided the other requirements of the EPC are also met by the amended text (with the exception of unity of invention - G 1/91). If the Division is of the opinion that such a limiting clarification is not necessary, it should consider that the practice of interpreting a claim in a contracting state may be quite different from that of the EPO, and hence the patentee may see a need for such a limiting clarification.

Such amendments, however, should not be proposed by the Opposition Division and they can only be taken into consideration up to the pronouncement of the decision (in oral proceedings) or until the date the decision is handed over to the EPO's internal postal service for transmittal to the parties (in written proceedings) (see G 12/91).

If an allowable request exists for maintenance of the opposed patent either as granted or in amended form, the following amendments should not be allowed:

(a)
filing of further claims (see T 829/93 and T 223/97);
(b)
comprehensive redrafting of the dependent claims; 
(c)
comprehensive redrafting of the description. 

In the absence of any amendments submitted by the patent proprietor with a view to meeting the grounds for opposition, there is no possibility to make any other amendments.