2.1.1 Rule 137(4) communication and response thereto

If the amendments and/or their basis cannot be properly identified such that compliance with Art. 123(2) cannot be assessed, the examining division notes a failure to meet either requirement of Rule 137(4). It consequently issues 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:

(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 PCT and/or Art. 34 PCT, if maintained on entry (see E‑IX, 3)

(iii)amendments filed on entry into the European phase from the PCT under Art. 28 PCT or Art. 41 PCT (see E‑IX, 3)

(iv)amendments filed after entry into the European phase from the PCT under Rule 161(1) or Rule 161(2) (see E‑IX, 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 It cannot relate to amendments which have since been withdrawn or superseded. A communication under Rule 137(4) can only be issued by the examining division, i.e. once it is responsible for the application (see C‑II, 1). Thus, a communication under Rule 137(4) cannot be issued by a search division drawing up a supplementary European search report (see B‑XI, 2).

If the applicant fails to comply with either requirement of Rule 137(4) within the above-mentioned period of one month, the application is deemed to be withdrawn, because the applicant is considered not to have replied to the communication from the examining division. The applicant may request further processing for failure to observe this time limit (see E‑VIII, 2).

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, 2.5.4).

Regarding the application of Rule 137(4) to auxiliary requests, see H‑III, 3.3.1.