7.4.2 Amended main/single request filed with the appeal 

If amendments clearly overcome the grounds for refusal, interlocutory revision is granted even if further new objections arise. This is because the applicant has the right to examination in two instances (see T 219/93).

Important criteria are (see T 47/90):

1. the text is no longer the same 

2. substantial amendments have been made. 

"Substantial" amendments overcome grounds for refusal vis-à-vis the documents already cited in the decision (e.g. example (d) below).

The examiner has the discretion to decide whether, in each particular case, the amendments to the claims are such that examination has to be continued on a new basis, e.g. where a completely new line of inventive-step argumentation would be necessary.

In arriving at this decision, the examiner takes into account all the grounds mentioned in the original decision, including the main or supporting arguments already raised in previous objections to patentability to which the applicant has had an opportunity to respond and to which reference is made in the grounds of refusal (e.g. objections mentioned in previous communications, during personal consultation or at oral proceedings). This is in the interest of procedural efficiency and to the benefit of the applicant (no second appeal fee necessary, see T 2445/11).

If amendments made to the independent claims clearly do not meet the requirements of Art. 123(2), interlocutory revision is not granted, but the division sends the file to the boards of appeal. If there are doubts as to whether the amendments meet the requirements of Art. 123(2) or the amendments clearly meet the requirements of Art. 123(2), the division checks whether the amended claims overcome the ground(s) for refusal as indicated above.

Examples: 

(a)The applicant has included a wording that has already been suggested by the examiner, the new claims are ready for grant but the description needs to be adapted: interlocutory revision must be granted since the grounds for the refusal have been overcome. 

(b)Refusal for lack of novelty only. New claims are clearly novel but not inventive. The question of inventive step had not been raised in the decision or in the previous procedure: there must be an interlocutory revision.

(c)Refusal for lack of novelty. New claim 1 filed which includes a feature from dependent claim 3. This claim had already been discussed in the decision and was considered not to be inventive: no interlocutory revision.

(d)Refusal for lack of novelty over D1. New claim 1 filed which includes a feature from the description. This feature had not been previously discussed per se; however, it is clearly disclosed in D1: no interlocutory revision since the ground for refusal – lack of novelty over D1 – has not been overcome.

(e)Refusal for lack of inventive step vis-à-vis D1 and D2. New claims filed which include a feature from the description. This feature had not been previously discussed, but is clearly disclosed in D1, and therefore there is no change in the argumentation given: no interlocutory revision since the ground for refusal – lack of inventive step vis-à-vis D1 and D2 – has not been overcome.

(f)Refusal for lack of inventive step vis-à-vis D1 and D2. New claim filed which includes five new features from the description. These features have not been previously discussed. The examiner notes that although these features are disclosed in D2, the lack-of-inventive-step argumentation would have to be revised: interlocutory revision is allowed, since (i) the applicant has made substantial amendments to overcome the objections raised in the decision and (ii) the line of argumentation has to be revised.

(g)Refusal for novelty vis-à-vis D1. New claims filed which clearly relate to unsearched subject-matter and which do not combine with the original searched claims to form a single general inventive concept: no interlocutory revision because said claims cannot be allowed in the proceedings.