GL H IV 3.1 Basic principles

The European patent as granted or as amended in opposition, limitation or revocation proceedings determines retroactively the protection conferred by the European patent application.[Art. 69(2); ]

Opposition proceedings will frequently give rise to amendments to the claims, following from grounds for opposition raised under Art. 100.

GL H IV 3 Allowability of amendments under Art. 123(3)

3.1 Basic principles

3.2 Protection conferred by the patent as granted

3.3 Version of the granted patent to be considered

3.4 Assessment of impermissible extension of the protection conferred

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

GL H IV 2.4 Assessment of "added subject-matter" – examples

If an application relates to a rubber composition comprising several ingredients and the applicant seeks to introduce the information that a further ingredient may be added, then this amendment is normally objected to as infringing Art. 123(2).

In the case of a disclosure of both a general and a preferred range, a combination of the preferred disclosed narrower range and one of the part-ranges lying within the disclosed overall range on either side of the narro

GL H IV 2.3.4 International applications

For the purposes of Art. 123(2), the documents as originally filed are those originally filed in the PCT phase (normally published as a WO publication), a copy of which can always be obtained from the International Bureau.

GL H IV 2.3.3 Applications resulting from a decision under Art. 61

If, as a result of a final decision, it is adjudged that a person other than the applicant is entitled to the grant of a patent, that person may file a new European patent application under Art. 61(1)(b).

GL H IV 2.3.2 Divisional applications

Under Art. 76(1), the subject-matter of a divisional application may not extend beyond the content of the parent application as originally filed. Furthermore, amendments made to the divisional application subsequent to its filing may not extend beyond the content of the divisional application as originally filed (Art. 123(2); for more details see C‑IX, 1.4).

GL H IV 2.3.1 Applications filed by reference to an earlier application

According to Rule 40(1)(c), the applicant may file a European application by reference to a previously filed application (A‑II, 4.1.3.1).

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

2.3.1 Applications filed by reference to an earlier application

2.3.2 Divisional applications

2.3.3 Applications resulting from a decision under Art. 61

2.3.4 International applications

GL H IV 2.2.8 Trade marks

If an amendment is made in order to clarify the meaning of a trade mark or to replace a registered trade mark with a corresponding technical term, the examining division needs to be particularly careful to ascertain that the amendment does not conflict with Art. 123(2). The composition of a trade-marked product may have changed over time.

GL H IV 2.2.7 Clarifications

The removal of a lack of clarity will normally not be objected to, provided that the change does not extend beyond the disclosure of the application as originally filed (Art. 123(2)).