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 examiner should bear in mind that the following questions may require special consideration at the amendment stage.
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 examiner should consider carefully whether an objection of lack of unity is justified at this stage of the proceedings (see F‑V, 8). If, however, the claims lack a common inventive concept and a further search is necessary, objection should be raised.
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). 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)?
Date retrieved: 02 November 2015