Applicants sometimes file a request for examination of certain claims only without actually restricting the set of claims, e.g. in order to achieve a positive IPER although the findings for some claims would be negative. An example would be where in reply to the WO‑ISA, which contained a negative opinion on claims 1-5 and a positive one on claims 6 and 7, the applicant does not change the claims but asks that the IPER be established for claims 6 and 7 only.
A request for examination of certain claims only is not accepted since the IPER is established on the claims on file and can only be restricted by the examiner, e.g. on the grounds of lack of unity with not all fees paid, unsearched claims, clarity or added subject-matter. A restriction at the request of the applicant would be contrary to Art. 35(2), which states that the IPER relates to "each claim". In such a case the applicant is informed that unless a restricted set of claims is filed the IPER will be established for all claims.[Art. 34(3)(c); Art. 34(4)(a)(i); (ii); Art. 35(2); ]
Date retrieved: 17 May 2021