4.1 Rule 137(5)

Rule 137(5) relates to a matter of substantive law rather than to procedural law. It sets out two further conditions for the allowability of amended claims, namely they 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).

Thus Rule 137(5), as opposed to Rule 137(3), does not provide a legal basis for the exercise of discretion by the division not to admit amended claims. The examination of the compliance of amended claims with Rule 137(5) therefore requires an in-depth assessment, not just a prima facie analysis.