4.2 Euro-PCT applications 

For Euro-PCT applications where the EPO acted as ISA or SISA, the examining division has to issue an invitation under Rule 164(2) for any now claimed but unsearched invention contained in the originally filed application documents (description, claims and drawings, if any) which are to serve as the basis for examination upon expiry of the six-month time limit set in the communication under Rule 161 or Rule 162 (see C‑III, 3.1).

5.Compliance of amendments with other EPC requirements

5.1General principles

The other EPC requirements with which amendments have to comply will depend on whether the amendments are filed in examination, opposition or limitation proceedings (see below).

5.2In examination proceedings

The question of allowability of amendments is legally a question of whether the application as so amended is allowable. An amended application must of course satisfy all the requirements of the EPC including, in particular, inventive step and the other matters listed in B‑XI, 3.6 (see also C‑III, 2). Also, however, especially when the claims have been substantially limited, the examining division needs to bear in mind that the following questions may require special consideration at the amendment stage.

(i)Unity of invention

Do the amended claims still satisfy the requirements of Art. 82? If the search report seems to reveal lack of novelty or inventive step in the concept common to all the claims, but the amended claims do not necessitate further search, the examining division will consider carefully whether an objection of lack of unity is justified at this stage of the proceedings (see F‑V, 6). If, however, the claims lack a common inventive concept and a further search is necessary, then an objection is raised.

(ii)Agreement of description and claims

If the claims have been amended, will the description require corresponding amendment to remove serious inconsistency between them? For example, is every embodiment of the invention described still within the scope of one or more claims? (see F‑IV, 4.3 and H‑V, 2.7). Conversely, are all of the amended claims supported by the description? (see F‑IV, 6). Also, if the categories of claims have been altered, will the title require corresponding amendment (see H‑V, 8)?

5.3In opposition proceedings

The proprietors of the patent generally have to indicate the basis in the original application documents or claims of the granted patent from which the amendments may be derived (Art. 100(c) and 123(2)). In addition, they should file observations as regards the patentability of the subject-matter of the patent as amended (with reference to Art. 100(a) and (b)), taking into account the state of the art and objections raised in the opposition notice together, where appropriate, with the evidence presented in support.

Opposition is not an opportunity to re-examine the whole patent; it is the amendments introduced into the patent which must be examined as to whether they comply with the EPC as a whole (see G 3/14, T 227/88 and T 301/87). Therefore the opposition division will check that the patent, by the amendments themselves, does not contravene the requirements of the EPC (with the exception of Art. 82, see G 1/91 and D‑V, 2). With respect to Art. 84, see D‑V, 5. For the form of amended documents, see H‑III, 2.2 to H‑III, 2.4. The formal requirements, in particular those specified by Rules 30 to 34, 42, 43, 48 and 50, and the decision of the President of the EPO dated 25 November 2022, OJ EPO 2022, A113, must also be satisfied (see Rule 86).

5.4In limitation proceedings

Limitation is not an opportunity to re-examine the whole patent; only the amended claims are to be examined with regard to Art. 84 and 123(2) and (3), i.e. what needs to be considered is whether the requested amendments introduce a deficiency within the meaning of those provisions. Claims as granted or as maintained are not examined anew.

5.4.1Art. 84

It is also to be verified that the amended claims are in conformity with Art. 84. For the interpretation of clarity under Art. 84 in limitation proceedings, the usual standards apply (see F‑IV, 4, 5 and 6). Note in this respect that mere clarifications made to the claims, in particular to dependent claims, cannot be allowed unless they are necessitated by the limitation(s) introduced elsewhere in the claims.

5.4.2Examination of the description and/or drawings

Rule 95(2) requires only the amended claims to be examined in limitation proceedings. Nonetheless, if the applicant has not filed amendments to the description, the examining division checks whether the amended claims are still supported by the description. If this is not the case, in accordance with Rule 95(2) the proprietor is requested to amend either the description or the claims, in order to comply with Art. 84. In this context it is pointed out that the examining division may not adapt the description of its own motion.

If, however, for the purpose of limitation an amended description and/or drawings are presented together with the claims, these are to be checked, but only for compliance with the requirements of Art. 123(2) and (3) and Art. 84. Note that in this respect amendments made to the description solely in order to improve the patent, or cosmetic changes which are not necessitated by the limited claims, cannot be allowed.

5.4.3Points to be disregarded

In limitation proceedings there is no examination as to why a request for limitation was filed or whether the goal of the limitation has been achieved, for example if the amended and limited claims are truly novel vis-à-vis a particular prior art document.

In general there is no need to verify whether the limited claims contravene any of Art. 52 to 57. It may however happen that limitation results in prima facie non-compliance with the patentability criteria, e.g. Art. 53, in which case the examining division will communicate this non-compliance to the requester.

Examples:

A granted claim directed to a generic plant is limited to a specific plant variety. As the amended claim then relates to a plant variety per se it is excluded from patentability under Art. 53(b) (G 1/98).

A claim granted to a device comprising a controlled explosion system is limited to a claim reciting an anti-personnel mine comprising the controlled explosion system, which would be contrary to Art. 53(a).