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Guidelines for Examination

 
 
Table of Contents - Guidelines for Examination
Part H Amendments and Corrections
Chapter III – Admissibility of amendments - other procedural matters
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
2.1.1
Rule 137(4) communication and response thereto

If the Examining Division notes a failure to meet either requirement of Rule 137(4), it may issue a communication requesting the correction of this deficiency within a period of one month. The amendments in respect of which such a communication may be sent include, inter alia:

Rule 137(4)

(i)
claims filed after the date of filing under Rule 58 (see A-III, 15)
(ii)
amendments filed before entry into the European phase from the PCT under Art. 19 and/or Art. 34 PCT (see E-VIII, 3)
(iii)
amendments filed on entry into the European phase from the PCT under Rule 159(1)(b) (see E-VIII, 3)
(iv)
amendments filed after entry into the European phase from the PCT under Rule 161(1) or (2) (see E-VIII, 3)
(v)
amendments filed in response to the search opinion (see B-XI, 8)
(vi)
amendments filed during the examination procedure (see, however, H-III, 2.1.3), including those filed after the communication according to Rule 71(3).

Such a communication can only be sent in respect of amendments which are part of a current request. It cannot relate to amendments which have since been withdrawn or superseded.

If the applicant fails to comply with this requirement within the above-mentioned period of one month, the application is deemed to be withdrawn due to the applicant's failure to reply to this communication from the Examining Division. The applicant may request further processing for failure to observe this time limit (see E-VII, 2.1).

Art. 94(4)

If the amendments are filed in response to a communication according to Rule 71(3) and the requirements of Rule 137(4) are not satisfied in respect of them, the Examining Division may send a Rule 137(4) communication. Thereafter, if the applicant replies in time, the Examining Division will then decide whether to admit the amendments (see H-II, 2.5.5).

Where auxiliary requests are filed, a Rule 137(4) communication may also be sent in respect of one or more of the main and/or auxiliary requests. Alternatively, where Rule 137(4) is not complied with in respect of a specific request (main or auxiliary), this request may, for reasons of procedural economy and taking into account the applicant's right to be heard in accordance with Art. 113(1), be deemed inadmissible according to Rule 137(3).

References

Rule 137(4)

Art. 94(4)