The filing of auxiliary requests (e.g. claim versions) together with a main request is possible in limitation proceedings, just as in examination proceedings. However, it should be remembered that there are restrictions with regard to the possibility of filing amendments in limitation proceedings (see D‑X, 4.3
and D‑X, 4.5
The procedure to be applied, subject to any request for oral proceedings, is slightly different to that applicable in pre-grant proceedings under Rule 71(3)
, especially in view of the requirements of Art. 113(1)
and Art. 113(2)
. In particular, in a case where an auxiliary request is allowable and the main request is not, if this were communicated under Rule 95(3)
, this would no longer leave the requester the option of having his main request rejected with an appealable decision. Thus, the following applies:
if the main request is allowable, the invitation under Rule 95(3)
to file the translations and pay the fees will be issued on that basis;
if an auxiliary request is allowable, but not the main request (and possibly other higher-ranking requests), the proprietor will be informed of the reasons in a communication under Rule 95(2)
and invited to abandon the non-allowable request(s); if he does not do so, the request will be rejected as in (c) below;
if none of the requests is allowable, initially a communication under Rule 95(2)
setting out the reasons and indicating a possible remedy is sent to the requester; if no remedy is undertaken, a decision rejecting the request is issued, and the annex prepared by the examining division will need to set out the reasons why none of the requests are allowable.
In cases (b) and (c), the decision may be appealed by the requester.