3.7.1 General issues

A request to withdraw an amendment is itself a request for further amendment; thus, if this request occurs after reply to the first communication from the examiner, the corresponding amendment will be admitted only if the examiner consents.

In deleting subject-matter from an application, the applicant should avoid any statement which could be interpreted as abandonment of that subject-matter. Otherwise the subject-matter cannot be reinstated (see J 15/85; G 1/05, OJ 2008, 271; G 1/06, OJ 2008, 307; see also Guidelines H‑III, 2.5 – November 2018 version).

In J 15/85 (OJ 1986, 395) it was held that if an applicant cancels claims in a patent application but fails to state at the time that their deletion is without prejudice to the filing of a divisional application, the examining division is obliged to withhold its consent to the subsequent filing of a divisional application. However, a declaration of abandonment can be interpreted to the effect that there was no intention to abandon definitively the subject-matter of the application or patent. In T 910/92 the applicants had expressly abandoned several claims in their application, but later retracted their declaration and requested that the claims deleted from the application be reinstated in a divisional application. The board considered under what circumstances it was possible to retract a declaration of abandonment. It referred to the case law, which required that the real intention of the party making the declaration be established, taking into account all the circumstances of the case, and concluded that in this case the appellants' real intention was not to abandon part of the original disclosure altogether, but to avoid the lack of unity that had arisen as a result of the change in the protection sought. In contrast to the case in J 15/85 the board did not see any need in this case to protect the public interest by generally prohibiting the retraction of a declaration of abandonment. It could be expected that any third parties interested in the proceedings relating to the application in question would have asked to inspect the files at suitable intervals up until the conclusion of the proceedings (G 1/06, OJ 2008, 307; G 1/05, OJ 2008, 271; J 2/01, OJ 2005, 88; J 29/97).

In J 13/84 (OJ 1985, 34) the Legal Board applied the same criteria to the interpretation of a declaration of abandonment as the case law had developed for declarations of withdrawal of an application. In particular, all the circumstances had to be taken into consideration and not just the preceding declarations. In the case in question the applicants had deleted their claim 21 in response to a communication from the examining division, adding that "in accordance with the examiner's suggestion, we are filing a divisional application for the intermediate products ... and for their method of preparation". The Receiving Section took the view that the divisional application, with the former claim 21 as its subject-matter, was not filed within the period of two months prescribed in R. 25(1)(b) EPC 1973 (in the version which entered into force on 7 October 1977; the provision was deleted with effect from 1 October 1988). It argued that claim 21, which had already been divided out from the application on 6 June 1983 and therefore no longer formed part of the parent application on 31 August 1983 (the date of filing of the divisional application), could no longer be converted into a divisional application. The Legal Board did not share this view and called for the declaration of abandonment to be interpreted in the same way as a declaration of withdrawal of an application, i.e. taking into account all the circumstances. It added that, generally speaking, and as stated in the headnote of J 11/80 (OJ 1981, 141), a request for withdrawal should only be accepted without question if it is completely unqualified and unambiguous. The Legal Board also referred to decisions J 24/82, J 25/82 and J 26/82 (OJ 1984, 467), in which it was found that, where claims were withdrawn specifically under R. 25(1) EPC 1973 (in the version which entered into force on 7 October 1977), the applicant's restrictive intention was not to be interpreted in isolation on the strength of particular statements but in the context of the entire procedure. The Legal Board took the view that in this case no express intention to drop the claim ensued from the circumstances. The divisional application was therefore admissible.

In T 118/91 the board ruled that the inclusion of a particular claim in a divisional application did not mean that claim had been dropped from the parent application.

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