4.10 Amendments/corrections filed in second Rule 71(3) period

In cases where a second Rule 71(3) communication is sent (see C‑V, 4.6 and C-V, 4.7.2) and the applicant replies within the second Rule 71(3) period by doing one or more of the following, the procedures explained in C‑V, 4.1 to C-V, 4.9 apply mutatis mutandis:

(i)filing further amendments or corrections 

(ii)rejecting amendments proposed by the examining division in the second Rule 71(3) communication

(iii)reverting to a higher-ranking request (where the second Rule 71(3) communication is based on an auxiliary request).

In particular, in such cases the applicant will be required neither to pay the fee for grant and publishing or any claims fees, nor to file translations of the claims within this second period under Rule 71(3). If the examining division agrees to a text (either with or without resumption of examination), a third communication under Rule 71(3) is then sent.

Furthermore, if the applicant replies to the second Rule 71(3) communication by rejecting amendments proposed by the examining division in the first Rule 71(3) communication (where these have not been superseded), the procedures described in C‑V, 4.1 to C-V, 4.9 likewise apply mutatis mutandis (no need to pay fees or file translations, etc.).

In respect of repeated requests for amendments in response to the second or subsequent Rule 71(3) communication, the division may exercise its discretion under Rule 137(3) not to admit such amendments (H‑II, 2.5.1). If the division intends not to admit the amendments, it will resume the examination proceedings, e.g. by summoning the applicant to oral proceedings. For this purpose, the procedure outlined below may be followed:

A summons to oral proceedings is sent with at least two months' notice. The communication annexed to the summons specifies the following:

–the amendments are not admitted under Rule 137(3) for the reasons explained in H‑II, 2.5.1

–if new amendments are filed, it is the intention of the division to use its discretion not to admit them under Rule 137(3) unless the amendments fulfil the criteria defined in H‑II, 2.5.1.

Unless the applicant switches back to the set of claims originally proposed for grant or convinces the division that any new set of claims fulfils the criteria defined in H‑II, 2.5.1, the application will be refused at the oral proceedings due to the lack of an agreed text (Art. 113(2)). Otherwise, the oral proceedings are concluded by announcing that a new Rule 71(3) communication will be issued.

If the applicant again files amended application documents in response to the new Rule 71(3) communication, and if these new amendments were already dealt with and considered inadmissible at the oral proceedings (i.e. if the subject of the oral proceedings has not changed), the application can be refused immediately (C‑V, 4.7.1).