Where the search was limited to certain claims by application of Rule 62a (see B‑VIII, 4.1 and B‑VIII, 4.2), the claims must be amended in such a way as to remove the unsearched independent claims and the description adapted accordingly. To this end, the claims may be amended, for example, by deleting an unsearched independent claim or, where this complies with Art. 123(2) and Art. 84, by making an unsearched independent claim dependent on another independent claim of the same category which has been searched.
In both of these cases, a specific amendment is necessary unless the examining division finds that the limitation of the search under Rule 62a and/or Rule 63 or the declaration of no search under Rule 63 was not justified, e.g. in view of arguments provided by the applicant.
Such amendments may, however, be made only in examination proceedings or, preferably, in reply to the search opinion (see F‑IV, 3.3). Since the applicant may not amend the claims before receipt of the search report (Rule 137(1)), any claims filed in reply to an invitation under Rule 62a or Rule 63 will be taken only as an indication of what the applicant wants the EPO to search and dealt with accordingly (see B‑VIII, 3.2 and B‑VIII, 4.2). The applicant will then have to confirm maintenance of these amendments formally on entry into the examination phase (see A‑V, 2.2).
6.Amendments relating to unsearched matter – Rule 137(5)
Rule 137(5) sets out two further conditions for amendments to claims, namely that amended claims may not relate to (i) unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept and (ii) subject-matter not searched in accordance with Rule 62a and Rule 63 (see, however, H‑II, 5).
6.1Rule 62a and/or Rule 63 cases
Amended claims may not relate to subject-matter not searched in accordance with Rule 62a or Rule 63 (see, however, H‑II, 5). Consequently, the presence of this subject-matter in the description cannot be used as a basis for its re-introduction into the claims (see also B‑VIII, 3.2.2 and B‑VIII, 4.2.2).
However, the examining division does not raise an objection under Rule 137(5), second sentence, if the applicant only further limits a searched claim by introducing subject-matter taken from the description unless this subject-matter was explicitly declared as not searched under Rule 62a and/or Rule 63.
When assessing the allowability of an amendment under Rule 137(5), second sentence, the examining division also evaluates if the limitation of the search under Rule 62a and/or Rule 63 or the declaration of no search was justified (see B‑VIII, 3.2.2, B‑VIII, 4.2.2, H‑II, 5). If the invitation was not appropriate or the limitation not justified, an additional search may be necessary (see C‑IV, 7.2).
6.2Subject-matter taken from the description
Rule 137(5), second sentence
Within the framework of Art. 123(2) and Art. 82, Rule 137(5), first sentence, should be construed as permitting any limitation of searched subject-matter which is unitary with the originally claimed subject-matter, irrespective of whether the technical feature(s) used for the limitation has/have been searched.
Thus, the addition to a claim of a technical feature which further defines an element that was already a feature of the original main claim or makes a contribution to the effect(s) of the features of the originally claimed invention(s) and which was expressly not searched but was disclosed in the context of the invention in the application as filed (usually in the description) will not result in an amended claim lacking a single general inventive concept with respect to the originally claimed invention(s). Consequently no objection under Rule 137(5), first sentence, should be raised in these circumstances, even though an additional search may be required (see C‑IV, 7.2).
If amended claims are directed to subject-matter which has not been searched because it only appeared in the description (and the search division did not find it appropriate to extend the search to this subject-matter; see B‑III, 3.5) and which does not combine with the originally claimed and searched invention or group of inventions to form a single general inventive concept, such amendments are not allowable.
In other words, in order to assess whether or not amended claims fulfil the requirements of Rule 137(5), first sentence, the examining division needs to establish first whether or not the subject-matter to which they relate has or should have been searched (see B‑III, 3.5) and second whether or not an objection of lack of unity would have been raised if the amended claims had been present in the set of claims on file at the time of the search.
As a consequence, an objection under Rule 137(5), first sentence, will normally arise if the applicant attempts to replace a technical feature contained in a claim with a different technical feature taken from the description.
Similarly, an objection under Rule 137(5), first sentence, would also arise if a technical feature taken from the description which has an effect unrelated to the effect(s) of the features of the originally claimed invention(s) were added to a claim.
If an objection under Rule 137(5), first sentence is raised, applicants are informed that they may continue to pursue such subject-matter only in the form of a divisional application under Art. 76.
The situation described above is different from amendments corresponding to an invention originally claimed but not searched under Rule 64, or Rule 164(1) or (2), which are dealt with in H‑II, 7.2.
Rule 137(5), first sentence
Applicants should bear in mind that the examination procedure should be brought to a conclusion in as few actions as possible. In this case, therefore, the examining division may exercise its right not to admit further amendments under Rule 137(3) (see H‑II, 2.3).
For Euro-PCT applications where the EPO acted as ISA or as SISA, the examining division has to issue an invitation under Rule 164(2) for any now claimed but unsearched invention contained in the originally filed application documents (description, claims and drawings, if any) which are to serve as the basis for examination upon expiry of the six-month time limit set in the communication under Rule 161 or Rule 162 (see C‑III, 2.3).