Dealing with different texts in examination
A situation may arise in which, as a result of amendment, the application has two or more distinct sets of claims (see H‑III, 4.2 to H-III, 4.4).
In examining the sets of claims referred to above, it will generally be found expedient to deal with each one quite separately, especially where the difference between them is substantial. The communication to the applicant will thus be divided into two or more parts, and the aim will be to have each set of claims, together with the description and drawings, brought into a state where it is in order to proceed to grant.
If the examinerexamining or opposition division
considers that the description and drawings are so inconsistent with either any
set of claims as to create confusion, heit
should require the applicant or proprietor
to amend the description and drawings to remedy this. If the applicant or proprietor
voluntarily proposes such an
amendment the examiner examining or opposition division
should admit it only if he it
considers it this
necessary. In particular, different descriptions and drawings will be required only if it is not possible to set out clearly in a common description which subject-matter is to be protected in the different contracting states. For adaptation of the description in case of national rights of earlier date, see H-III, 4.4.
Hence this type of application or patent will, after amendment, either consist of two or more distinct sets of claims each supported by the same description and drawings, or two or more sets of claims each supported by different descriptions and drawings.
For the application of Rules 80 and 138 in opposition proceedings, see H-III, 4.2, H-III, 4.4, and H-III, 4.5.