5.5. Non-compliance with Rule 137(5) EPC: a ground for refusing an application

In T 2459/12 the board noted that in T 1981/12 doubt was also expressed whether R. 137(5) EPC could be an appropriate basis for refusing an application. The board in T 1981/12 concluded that, by reference to T 708/00 and T 442/95, an amendment not complying with this rule was inadmissible. According to Art. 97(2) EPC, a European patent application which does not meet the requirements of the EPC is refused unless "this Convention provides for a different legal consequence". R. 137(5) EPC sets out a requirement to be met by amended claims of a European patent application, and neither in the Rule itself nor elsewhere in the EPC is any "different legal consequence" provided for the case where this requirement is not met. The board therefore judged that a failure to meet the requirements of R. 137(5) EPC was a ground for refusal of the application under Art. 97(2) EPC (see also T 2431/19, T 1126/11) . The board stated that this was also entirely consistent with the view taken in T 708/00 according to which R. 86(4) EPC 1973 was regarded as having "the status of an administrative provision in the context of the search and grant procedures", as is "the case for the unity of invention requirement in general".