Rule 137 EPC: Amendment of the European patent application

Text of Rule 137 EPC

In plain English

Rule 137 controls the timing and form of amendments; Article 123(2) controls their content.

Timing. You cannot amend before you receive the search report (Rule 137(1)). With your reply to the search opinion under Rule 70a, or to the Rule 161 communication for a Euro-PCT application, you may amend of your own volition (Rule 137(2)). After that, every further amendment needs the examining division's consent (Rule 137(3)). In practice amendments filed in reply to a communication are admitted, but late or repeated changes of direction can be refused.

Form. Each amendment must be identified and its basis in the application as filed indicated (Rule 137(4)). Vague references such as “see the description as filed” are generally not enough (Guidelines H-III, 2.1). If you fall short, the division can give you one month to fix it, and missing that month means the application is deemed withdrawn, though further processing is available.

Content. Rule 137(5) stops you switching to unsearched subject matter that does not share a single inventive concept with the searched claims, and to subject matter left unsearched under Rule 62a or 63. T 708/00 framed the test: amendments are barred only if, had they been filed with the original claims, they would have needed a further search fee as a separate invention. Even between two searched inventions, you cannot switch after a negative opinion on the one you chose (G 2/92; Guidelines H-II, 6.1).

The way out for unsearched or abandoned subject matter is a divisional application.

Deadlines and fees

Key decisions

• T 708/00 (Transmission frame/ALCATEL) : Amended claims are barred only if, filed with the original claims, they would have required a further search fee as a different invention; novelty-destroying art alone does not prove a posteriori non-unity.
• G 2/92 : Subject matter for which no search fee was paid cannot be pursued in the application; it must go into a divisional.
• G 3/89 : Corrections of the description, claims and drawings are limited to what the skilled person would directly and unambiguously derive from the documents as filed.

Common objections

Rule 137(4) communication

File a marked-up copy and a table mapping each amended feature to page and line of the application as filed, within one month.

Rule 137(5) objection

Show that the new claims share the special technical feature of the searched invention, or move them to a divisional.

Amendment not admitted under Rule 137(3)

Usually late amendments that raise new issues. Explain why the amendment overcomes the objections without needing a new search, and keep changes focused.

Drafting and prosecution tips

• Make your main amendments in the reply to the search opinion, when no consent is needed.
• Always file a marked-up version and a basis table with amendments; it heads off Rule 137(4) invitations.
• Keep amendments within the searched invention; take other directions into divisionals.