4.1.2 Subject-matter taken from the description 

Within the framework of Art. 123(2) and Art. 82, Rule 137(5), first sentence, should be construed as permitting any limitation of searched subject-matter which is unitary with the originally claimed subject-matter, irrespective of whether the technical feature(s) used for the limitation has/have been searched.

Where the EPO has acted as ISA or SISA and the application has just entered the regional phase before the EPO, the amendments filed in response to a communication under Rule 161 are exempt from the requirements of Rule 137(5). If the claims to be examined relate to an invention which differs from any of the inventions originally claimed, an invitation under Rule 164(2) has to be sent out instead (see H‑IV, 4.2).

The subject-matter of the claims searched by the EPO may encompass more than one invention. This may be the case when at search stage a lack of unity objection was raised and the applicant paid a further search fee. If the applicant limits the examination to one of the searched inventions and later, following amendments, switches to another searched invention, Rule 137(5) is not applicable. Instead, the procedure outlined in H‑II, 6.1 needs to be followed.

If amended claims are directed to subject-matter which has not been searched because it only appeared in the description (and the search division did not find it appropriate to extend the search to this subject-matter; see B‑III, 3.5) and which does not combine with the originally claimed and searched invention or group of inventions to form a single general inventive concept (see F‑V, 3), such amendments are not allowable.

In other words, in order to assess whether or not amended claims fulfil the requirements of Rule 137(5), first sentence, the examining division needs to establish first whether or not the subject-matter to which they relate has or should have been searched (see B‑III, 3) and second whether or not an objection of lack of unity would have been raised if the amended claims had been present in the set of claims on file at the time of the search.

As a consequence, an objection under Rule 137(5), first sentence, will normally arise if the applicant attempts to replace a technical feature contained in a claim with a technical feature taken from the description and having an effect unrelated to the effect(s) of the features of the originally claimed invention(s).

If an objection under Rule 137(5), first sentence, is raised, the examining division provides a reasoning why the subject-matter has not been searched (see B‑III, 3) and why the subject-matter does not combine with the originally claimed invention or group of inventions to form a single general inventive concept (see F‑V, 3). Applicants are informed that they may continue to pursue such subject-matter only in the form of a divisional application under Art. 76.

The situation described above is different from amendments corresponding to an invention originally claimed but not searched under Rule 64, or Rule 164(1) or Rule 164(2), which are dealt with in H‑II, 6.2.

Applicants should bear in mind that the examination procedure should be brought to a conclusion in as few actions as possible. Therefore, the examining division may exercise its right not to admit further amendments under Rule 137(3) (see H‑II, 2.3).