GL H

 
Chapter I – The right to amend
Chapter II – Admissibility of amendments – general rules
1.Introduction
2.Admissibility 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 Article 83
2.3.1.2Rule 137(3) in conjunction with Article 123(2)
2.3.1.3Rule 137(3) in conjunction with Article 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
7.Amendments in the case of non-unity
7.1Restriction to a single, searched invention
7.2Restriction to an unsearched invention
7.3No restriction to a single invention searched
7.4Further procedural aspects concerning Euro-PCT applications
7.4.1Where the EPO does not perform a supplementary search
7.4.2Where 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2.1.2Amendments withdrawn or superseded in the Rule 137(4) period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
3.1.4Indication of amendments made in main and/or auxiliary requests in examination proceedings
3.2In the search phase
3.3In examination proceedings
3.3.1Admissibility of auxiliary requests
3.3.1.1Criteria for admissibility of auxiliary requests
3.3.1.2Timeliness and structure of auxiliary requests
3.3.2Preparing the decision
3.3.3Complete text for auxiliary request not yet available
3.3.4Complete text for auxiliary request available
3.3.5Applicant 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) and Art. 54(4) EPC 1973
4.3Different text where a transfer of right has taken 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 took 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 after the date of filing
2.2.3Claims filed after the date of filing
2.2.4Sequence listings filed after the date of filing
2.2.5Priority documents
2.2.6Citation of prior art in the description after the filing date
2.2.7Clarifications
2.2.8Trade 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.Compliance of amendments with other EPC requirements
4.1General principles
4.2In examination proceedings
4.3In opposition proceedings
4.4In limitation proceedings
4.4.1Art. 84
4.4.2Examination of the description and/or drawings
4.4.3Points 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
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
3.5Disclaimer disclosed in the application as originally filed
4.Disclaimers not disclosed in the application as originally filed
4.1The subject-matter to be excluded is not disclosed in the application as originally filed (so-called undisclosed disclaimers)
4.2The 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 of corrections
2.1.1Admissibility of corrections in opposition and limitation proceedings
2.2Allowability of corrections
2.2.1Correction of description, claims and drawings
2.2.2Missing parts of description and missing drawings filed as corrections under Rule 139
2.3Examples
3.Correction of errors in decisions and related application and patent documents
3.1Admissibility of corrections
3.2Allowability of correction of bibliographic data
3.3Correction of formatting/editing errors
3.4Correction of the translations of the claims
3.5Correction of errors under Rule 140 while opposition proceedings are pending – procedural aspects
4.Errors in publication
 
 

Source: http://www.epo.org/law-practice/legal-texts/html/guidelines/e/h.htm

Date retrieved: 30 December 2018

165 references found.

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EPO Guidelines Foreword

EPO Guidelines - A Formalities Examination

EPO Guidelines - C Procedureal Aspects of Substantive Examination

EPO Guidelines - G Patentability

EPO Guidelines - H Amendments and Corrections