GL H III 2.1.1 Rule 137(4) communication and response thereto

If the amendments and/or their basis cannot be properly identified such that compliance with Art. 123(2) cannot be assessed, the examining division notes a failure to meet either requirement of Rule 137(4). It consequently issues a communication requesting the correction of this deficiency within a period of one month.

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

When filing amendments, the applicant must identify them and indicate the basis for them in order to enable the division to assess compliance of the amendments with the provisions of Art. 123(2). To this end, the division may request that amendments have to be indicated either with respect to the immediate previous amendments in the sequence or with respect to the application as filed.

GL H III 2 Procedure for amendments to documents

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

2.2 Amendment by submitting missing documents or by filing replacement pages

2.3 Amendments using copies

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

GL H III 1 Introduction

This chapter deals with procedural matters and formal requirements relating to the admissibility of amendments. An important requirement dealt with is the applicant's obligation to identify amendments and indicate the basis for them in the application as filed (Rule 137(4); for transitional provisions, see H‑III, 2.1.4).

GL H III – Admissibility of amendments – other procedural matters

1. Introduction

2. Procedure for amendments to documents

3. Auxiliary requests

4. Different texts in respect of different contracting states

5. Calculation of claims fees

GL H II 7.4.2 Where the EPO performs a supplementary search

Where the EPO performs a supplementary search on an application which is considered to lack unity, the applicant will be invited to pay additional fees, and the supplementary search report will be established for those inventions for which a search fee has been paid. The application must then be limited to one of the inventions searched in the supplementary search.

GL H II 7.4.1 Where the EPO does not perform a supplementary search

Where the EPO does not perform a supplementary search, the application must be limited to an invention searched either in the international phase by the EPO or in the European phase in a search under Rule 164(2)(a).

GL H II 7.4 Further procedural aspects concerning Euro-PCT applications

7.4.1 Where the EPO does not perform a supplementary search

7.4.2 Where the EPO performs a supplementary search

GL H II 7.3 No restriction to a single invention searched

If in response to the search opinion the applicant does not restrict the application to a single invention searched, the objection of lack of unity raised at the search stage will be reviewed and if the examining division considers that it remains valid, a first communication repeating the lack-of-unity objection raised in the search opinion will be issued.

In Rule 164(2) cases, a lack of unity objection is addressed in the communication under Rule 164(2)(b) (see also

GL H II 7.2 Restriction to an unsearched invention

If not all of the claimed inventions have been searched, in accordance with G 2/92 the applicant must restrict the claims to one of the searched inventions. Thus, if in reply to the search opinion the applicant then restricts the claims to one of the originally claimed inventions which has not been searched, the examining division will write a first communication repeating the lack-of-unity objection raised in the search opinion.