Legal Evaluation of Each Statement
Under Article 123(2) EPC, a European patent application (or patent) may not be amended so that it contains subject-matter extending beyond the content of the application as filed.
For a Euro-PCT application, the EPO Guidelines clarify what “as filed” means: the documents originally filed in the PCT phase (normally the WO publication content as filed). Amendments made later (during the international phase or on/after entry into the European phase) are allowable only if they still comply with Art. 123(2) EPC, i.e. if they are derivable from that original PCT filing content.
Legal Evaluation of Each Statement
a) Basis only in the priority document US-P — False
Relying only on the priority document is not enough for Art. 123(2) EPC. The test is whether claim S is disclosed in the application as filed (here: the PCT application as originally filed), not whether it is disclosed somewhere else such as the priority application.
(Unless a special “filing by reference/incorporation” situation applies—which is not indicated—priority content does not automatically become part of the Euro-PCT disclosure for Art. 123(2).)
b) Basis only in the amended claim set R filed on EP entry — False
A later set of claims R filed on entry into the European phase is an amendment. Art. 123(2) compliance still requires that the subject-matter of the further claim S be directly and unambiguously derivable from the PCT application as originally filed, not merely from what the applicant wrote later in prosecution.
So “only basis in R” is insufficient.
c) Basis only in the abstract of PCT-Q — False
The abstract is not a valid reservoir for amendments. Article 85 EPC states that the abstract serves the purpose of technical information only and “may not be taken into account for any other purpose”.
Accordingly, it cannot be used as the sole basis for an amendment under Art. 123(2) EPC.
d) Basis in an original PCT-Q claim identical to S — True
If
one claim of PCT-Q as originally filed has the same wording as claim S, then S is directly disclosed in the application as filed (the PCT filing content). That satisfies Art. 123(2) EPC.
Exam Tip:
When you see “basis for amendment” in a Euro-PCT fact pattern, lock in this hierarchy:
- Gold rule: Art. 123(2) basis must be in the application as filed.
- For Euro-PCT: “as filed” = PCT application as originally filed (not later amendments, not prosecution documents).
- Never use as sole basis: priority document (unless special incorporation is given) and abstract (Art. 85 EPC).
- Safest basis: verbatim support in the original PCT claims/description/drawings (here: an original claim identical to S).
Legal Disclaimer
The information provided in this post is for general informational purposes only and does not constitute legal advice. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.