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Guidelines for Examination

 
 
3.5.2
Written procedure 

If the Examining Division, after examining the request for limitation, considers that the patent can be limited only on the basis of an auxiliary request, it informs the requester accordingly in a communication under Rule 95(2), giving reasons why the main request and any higher-ranking auxiliary requests are not allowable and informing the requester which auxiliary request is considered allowable. Where appropriate, the Division also informs the requester what amendments must be made to the patent specification documents to bring them into line (Art. 105b(1) and Rule 95(2)).

If in response to the communication under Rule 95(2) the requester withdraws his unallowable request(s) and (where applicable) makes any amendments still outstanding, the Examining Division will issue a communication under Rule 95(3) inviting him to pay the prescribed fee and to file the translation of the limited claims of the allowable request (see D-X, 5).

If the requester insists on maintaining an unallowable request, and fails to comply with the Examining Division's request that he file documents corresponding to the allowable auxiliary request, the request for limitation must be rejected (Art. 105b(2) and Rule 95(4)). The decision must give the reasons for not allowing the higher-ranking request(s) and must point out, as regards the allowable auxiliary request, that the requester failed to comply with the Division's request to submit a text enabling the patent to be limited on the basis of the allowable request.