Part H
Amendments and Corrections

Contents

Chapter I – The right to amend

Chapter II – Admissibility of amendments – general rules

1.Introduction

2.Admissibility in the during examination procedure

2.1Before receipt of the search report – Rule 137(1)

2.2After receipt of the search report – Rule 137(2)

2.3After receipt of the first communication – Rule 137(3)

2.3.1Examples of the exercise of discretion under Rule 137(3)

2.3.1.1Rule 137(3) in conjunction with Art. 83

2.3.1.2Rule 137(3) in conjunction with Art. 123(2)

2.3.1.3Rule 137(3) in conjunction with Art. 84 – missing essential feature

2.3.1.4Rule 137(3) in conjunction with auxiliary requests

2.4At an advanced stage of the proceedings

2.5Amendments filed in reply to a Rule 71(3) communication

2.5.1Criteria for admitting such amendments

2.5.2Further course of proceedings

2.5.3Exceptional case where amendments must be admitted

2.5.4Rule 137(4) applies to amendments filed at this stage

2.6Further requests for amendment after approval

2.7Late-filed requests after summons to oral proceedings in examination

2.7.1Concept of "clear allowability"

3.Admissibility in opposition procedure

3.1Amendments in reply to the notice of opposition

3.2Amendments not related to the grounds for opposition

3.3Amendments occasioned by national rights

3.4Insistence on unallowable amendments

3.5Late-filed requests in opposition proceedings

4.Amendments in limitation procedure

5.Amendments required by a limitation of the search under Rule 62a and/or Rule 63

6.Amendments relating to unsearched matter – Rule 137(5)

6.1Rule 62a and/or Rule 63 cases

6.2Subject-matter taken from the description

6.7. Amendments in the case of non-unity

6.17.1 Restriction to a single, searched invention

6.27.2 Restriction to an unsearched invention

6.37.3 No restriction to a single invention searched

6.47.4 Further procedural aspects concerning Euro-PCT applications

6.4.17.4.1 Where the EPO does not perform a supplementary search

6.4.27.4.2 Where the EPO performs a supplementary search

Chapter III – Admissibility of amendments – other procedural matters

1.Introduction

2.Procedure for amendments to documents

2.1Indication of amendments and their basis under Rule 137(4)

2.1.1Rule 137(4) communication and response thereto

2.1.2Amendments withdrawn or superseded in the Rule 137(4) period

2.1.3Rule 137(4) and oral proceedings

2.1.4Transitional provisions relating to Rule 137(4)

2.2Amendment by submitting missing documents or by filing replacement pages

2.3Amendments using copies

2.4Amendments made by the EPO at the request of a party

2.5Withdrawal of amendments/abandonment of subject matter

3.Auxiliary requests

3.1General principles

3.1.1Sequence of requests

3.1.2Obligation to give reasons

3.1.3Neither main nor auxiliary requests allowable

3.2In the search phase

3.3In examination proceedings

3.3.1Indication of the amendments made in the requests and of their basis

3.3.2Admissibility of auxiliary requests

3.3.2.1Criteria for admissibility of auxiliary requests

3.3.2.2Timeliness and structure of auxiliary requests

3.3.3Preparing the decision

3.3.4Complete text for auxiliary request not yet available

3.3.5Complete text for auxiliary request available

3.3.6Applicant does not approve the text proposed for grant

3.4In opposition proceedings

3.4.1Written procedure

3.4.2Oral proceedings

3.5In limitation proceedings

3.5.1General principles

3.5.2Written procedure

3.5.3Oral proceedings

4.Different texts in respect of different contracting states

4.1Dealing with different texts in examination

4.2Different text in respect of the state of the art according to Art. 54(3) EPC and Art. 54(4) EPC 1973

4.3Different text where a transfer of right takes place pursuant to Art. 61 or Rule 78 in respect of certain designated states

4.3.1Different text where a transfer of right takes place pursuant to Art. 61 in examination proceedings

4.3.2Different texts where a transfer of the patent in respect of certain designated states takes place in opposition proceedings

4.3.3Opposition cases with different texts where a transfer of rights by virtue of a final decision pursuant to Art. 61 takes place in examination proceedings

4.4Different texts where national rights of earlier date exist

4.5Opposition proceedings where the claims as granted are different for different contracting states

5.Calculation of claims fees

Chapter IV – Allowability of amendments – Art. 123(2) and (3)

1.Introduction

2.Allowability of amendments under Art. 123(2)

2.1Basic principle

2.2Content of the application as "originally" filed – general rules

2.2.1Features described in a document cross-referenced in the description

2.2.2Missing parts of the description or missing drawings filed under Rule 56 after the date of filing

2.2.3Erroneously filed application documents or parts under Rule 56a

2.2.42.2.3 Claims filed after the date of filing

2.2.52.2.4 Sequence listings filed after the date of filing

2.2.62.2.5 Priority documents

2.2.72.2.6 Citation of prior art in the description after the filing date

2.2.82.2.7 Clarifications

2.2.92.2.8 Trade marks

2.3Content of the application as "originally" filed – special applications

2.3.1Applications filed by reference to an earlier application

2.3.2Divisional applications

2.3.3Applications resulting from a decision under Art. 61

2.3.4International applications

2.4Assessment of "added subject-matter" – examples

3.Allowability of amendments under Art. 123(3)

3.1Basic principles

3.2Protection conferred by the patent as granted

3.3Version of the granted patent to be considered

3.4Assessment of impermissible extension of the protection conferred

3.5Conflicts between Art. 123(2) and Art. 123(3)

3.6Conflicts between Art. 123(3) and other requirements of the EPC

4.Amendments relating to unsearched matter

4.1Rule 137(5)

4.1.1Rule 62a and/or Rule 63 cases

4.1.2Subject-matter taken from the description

4.2Euro-PCT applications

5.4. Compliance of amendments with other EPC requirements

5.14.1 General principles

5.24.2 In examination proceedings

5.34.3 In opposition proceedings

5.44.4 In limitation proceedings

5.4.14.4.1 Art. 84

5.4.24.4.2 Examination of the description and/or drawings

5.4.34.4.3 Points to be disregarded

Chapter V – Allowability of amendments – examples

1.Introduction

2.Amendments in the description

2.1Clarification of a technical effect

2.2Introduction of further examples and new effects

2.3Supplementary technical information

2.4Revision of stated technical problem

2.5Reference document

2.6Alteration, excision or addition of text in the description

2.7Bringing the description into line with amended claims

3.Amendments in claims

3.1Replacement or removal of features from a claim

3.2Inclusion of additional features

3.2.1Intermediate generalisations

3.3Deletion of part of the claimed subject-matter

3.4Further cases of broadening of claims

4.Disclaimers

4.1Disclaimer disclosed in the application as originally filed

4.2Disclaimers not disclosed in the application as originally filed

4.2.1The subject-matter to be excluded is not disclosed in the application as originally filed (so-called undisclosed disclaimers)

4.2.2The subject-matter to be excluded is disclosed in the application as originally filed

5.Amendments to drawings

6.Amendments derived from drawings

7.Changes in claim category in opposition

7.1Product claim to use claim

7.2Product claim to method claim

7.3Method claim to product claim

7.4Method claim to use claim

8.Changes in the title

Chapter VI – Correction of errors

1.Introduction

2.Corrections of errors in documents filed with the EPO

2.1Admissibility

2.1.1Admissibility in opposition and limitation proceedings

2.1.1.1Errors in the description, claims and drawings

2.2Allowability

2.2.1Correction of description, claims and drawings

2.2.2Missing parts of description and , missing drawings or correction of erroneously filed application documents filed as corrections under Rule 139

3.Correction of errors in decisions

3.1Admissibility

3.2Allowability of the correction of bibliographic data

3.3Correction of the decision to grant errors under Rule 140 while opposition proceedings are pending – procedural aspects

4.Correction of formatting/editing errors

5.Correction of the translations of the claims

6.Errors in publication