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Allowable Amendments in the European Phase

Question 9

Detailed Answer with Legal References

Statement a) — False

Art. 123(2) EPC prohibits amendments introducing subject-matter not originally disclosed.

However, whether the amendment was searched or not is irrelevant for Art. 123(2). Instead, Rule 137(5) EPC restricts examination of unsearched subject-matter.

Thus, an amendment can be allowable under Art. 123(2) EPC even if unsearched.

Statement b) — False

If an amendment is novel and inventive over the application as filed, it introduces something not directly and unambiguously derivable from the original disclosure.

This violates Art. 123(2) EPC.

Therefore, such an amendment cannot be allowable.

Statement c) — True

Drawings form part of the application as filed (Art. 78(1)(d) EPC).

Information that is directly and unambiguously derivable from drawings may serve as a valid basis for amendments under Art. 123(2) EPC.

Thus, an amendment based only on the drawing can be allowable.

Statement d) — False

Amendments under Art. 19 PCT are made after filing the international application, once the ISR has been issued.

They are therefore not part of the application as originally filed.

Consequently, amendments based solely on Art. 19 PCT amendments would add subject-matter → not allowable under Art. 123(2) EPC.

Exam Tip

Always distinguish:

  • Art. 123(2) EPC → “no added subject-matter.”
  • Rule 137(5) EPC → unsearched subject-matter restriction.

Drawings can be a valid amendment basis.

Art. 19 PCT amendments are not part of the original disclosure.

If something is “new” compared to the filed version → it automatically violates Art. 123(2) EPC.

Legal Disclaimer

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