5. Amendments required by a limitation of the search under Rule 62a and/or Rule 63

Where the search was limited to certain subject-matter by application of Rule 63 (see B‑VIII, 3.1 and B-VIII, 3.2), the claims must be amended in such a way as to remove the unsearched subject-matter and the description adapted accordingly.

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).

If, following the first communication of the examining division, the claims are not amended (i.e. by deletion of claims and/or parts of the claims as originally filed) and still cover non-searched subject-matter, and the applicant fails to submit convincing arguments as to why the invitation under Rule 62a(1) and/or Rule 63(1) was not justified, the application is to be refused under Art. 97(2) based on a failure to comply with the requirements of the EPC underlying the invitation under Rule 62a(1) and/or Rule 63(1) (see F‑IV, 3.3). The decision to refuse the application must indicate why the subject-matter claimed includes non-searched subject-matter and state the reasons for the invitation under Rule 62a(1) and/or Rule 63(1), taking account of the applicant's comments.

Any request for oral proceedings must be granted before refusing an application.