Indication of amendments and their basis under Rule 137(4)

When filing amendments, the applicant must identify them and indicate the basis for them in order to enable the division to assess compliance of the amendments with the provisions of Art. 123(2). To this end, the division may request that amendments have to be indicated either with respect to the immediate previous amendments in the sequence or with respect to the application as filed. The requirement to indicate amendments is to be understood as an opportunity for the applicant to provide convincing arguments to the division as to why the amendment(s) is/are directly and unambiguously derivable from the application as filed. These arguments are particularly important for the outcome of the division's assessment of Art. 123(2) where literal support for the amendment(s) is not present in the application as filed.

The requirement that the basis for amendments be indicated is met if, on consulting those parts of the application indicated, it is not necessary to look further in order to assess the amendment's compliance with Art. 123(2). Non-specific indications such as "see the description as filed" or "see the claims as filed" or "see the examples as filed" are generally not considered sufficient. This requirement also applies in cases where the applicant requests the examining division to amend the application (see H‑III, 2.4).

Whether the requirements of Rule 137(4) are met is assessed independently of whether the amendments in question comply with Art. 123(2). For example, the applicant may indicate that a particular amendment is based on a technical feature disclosed only in a schematic drawing. If the feature supposedly forming the basis for the amendment is indeed disclosed in the drawing indicated by the applicant, the requirements of Rule 137(4) are met, irrespective of whether the amendment based on that technical feature is allowable according to Art. 123(2) (see H‑IV, 2.4).

Where the application was not filed in an official language of the EPO, in the absence of evidence to the contrary, for the purpose of assessing compliance with Art. 123(2) the EPO assumes that any translation of the application as filed is accurate. Consequently, in order to comply with Rule 137(4) it is sufficient to indicate the basis of an amendment in the translation of the application as filed.

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