Amending applications before and during examination proceedings
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172
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After receiving the examiner's first communication, you may of your own volition amend the description, claims and drawings once, ie when replying to the communication. No further amendments are allowed without the examining division's consent. Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention to form a single general inventive concept. In deleting subject-matter from an application, you should avoid any statement which could be interpreted as abandonment of that subject-matter. Otherwise the subject-matter cannot be reinstated.
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R. 86(3), (4)
Guid. C-VI, 4.7, 4.8, 5.2
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173
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The Guidelines set limits on the amendments that you can make to the description, claims and drawings after receiving the communication under Rule 51(4). Once you have approved the text communicated to you pursuant to Rule 51(4) (including minor amendments and/or corrections of errors, see point 165) by filing the translations and paying the fees, further amendments will only exceptionally be allowed under the discretionary power given to the examining division by Rule 86(3).
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Guid. C-VI, 4.9
Guid. C-VI, 4.10
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174
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The application may on no account be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed (which does not include the priority document). However, subsequently filed examples or statements of advantage may be considered by the examiner as evidence in support of the invention's patentability.
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Art. 123(2)
Guid. C-II, 4.3;
Guid. C-VI, 5.3-5.3.9
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This technical information is generally added to the part of the file that is open to public inspection (see point 151). From the date on which it is added, it forms part of the state of the art within the meaning of Article 54(2) EPC (see point 32). A note is printed on the cover page of the patent specification to alert the public that information submitted after the application was filed is not included in the specification (see point 169).
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R. 93(d)
Guid. C-VI, 5.3.6
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175
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You can make amendments to the European patent application in one of the following ways:
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Guid. E-II
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(a)
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by filing replacement pages. You should use this method only if the amendments are extensive and complicated. If it is not immediately clear how or why an amendment is to be made, you should provide explanatory notes in the margin of the replacement pages or on separate sheets. You must comply with the provisions governing application document presentation (see point 70).
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(b)
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by annotating a copy of the relevant page(s) of the application. This is the preferred method if the amendments are not too extensive, as it simplifies checking. The amendments may be handwritten or typed; handwritten amendments must be clearly legible so as to avoid printing errors.
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(c)
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by indicating the changes in a letter. This method is suitable if, for example, you wish to delete whole pages, paragraphs or drawings.
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D. The European patent grant procedure
Stages of the procedure
National requirements governing translations of European patents
