2.5 Amendments filed in reply to a Rule 71(3) communication
2.5.1 Criteria for admitting such amendments
Decision G 7/93 dealt with the criteria to be applied when examining the admissibility of late-filed amendments in examination. The particular case to which that decision relates arose when the rules were differently formulated, and in a situation where the applicant had already consented to the version proposed by the examining division. However, what was said by the Enlarged Board in that case can be considered generally applicable to new requests put forward at a late stage of the proceedings, i.e. when the applicant has already had at least one opportunity to amend the application and the examining division has already completed substantive examination of the application (see T 1064/04).
In particular, applying the principles of G 7/93 to amendments filed in response to the communication under Rule 71(3) (see C‑V, 1 to C‑V, 3) means that this communication does not constitute an opportunity for the applicant to call into question the outcome of the earlier procedure. In deciding whether to admit such amendments, a balance must be struck between the applicant's interest in obtaining a patent which is valid in all of the designated states and the EPO's interest in bringing the examination procedure to a close by the issue of a decision to grant the patent. At this stage of the proceedings, the substantive examination has already been completed and the applicant has had the opportunity to amend the application. Therefore normally only those amendments which do not appreciably delay the preparations for grant of the patent will be admitted under Rule 137(3).
It is, however, appropriate to admit separate sets of claims for one or more designated states for which prior national rights exist (see H‑III, 4.4).
The rejection of amendments proposed by the examining division in a Rule 71(3) communication which have been introduced without prior consultation and agreement of the applicant (C‑V, 1.1) does not amount to a request for amendment to which discretion under Rule 137(3) applies.