先提到歐洲專利修正的時機:
接收到歐洲檢索報告(search
report)前不能修正
提出補充檢索報告請求時可以提出修正(這針對PCT進入EP的案子)
接收到歐洲檢索報告後可以修正
接收到歐洲審查意見(first/second
... Communication)後,申請人可提出修正
歐洲專利修正規定這裡討論很多,本篇直接引用歐洲審查指南的Part H「修正與校正(Amendments and Corrections)」中「檢索報告後的修正」規定(收到檢索報告前不得修正):
2.2 After receipt of the search report - Rule 137(2)
After receiving the European search report and the search opinion, the applicant must respond to the search opinion (see B-XI, 8) and may, in his reply and of his own volition, amend the description, claims and drawings (see C-II, 3 and subparagraphs, and C-III, 3.2). Likewise, for applications for which no supplementary European search report is prepared (see B-II, 4.3) when entering the European phase from the PCT, the applicant is required to respond to the WO-ISA, IPER or SISR
where the ISA and, if applicable, the IPEA or SISA was the EPO (see E-VIII, 3.1 and 3.2). This response to the WO-ISA, IPER or SISR may include amendments made by the applicant of his own volition to the description, claims and drawings. Thereafter, the applicant may amend the application only with the consent of the Examining Division.
此段規定申請人有義務回應歐洲專利局提出的檢索報告(包括PCT進入EP的申請案補充檢索報告),包括可以提出說明書、請求項與圖式修正,而審查部門決定是否同意修正。
修正細則在Rule 137:
When filing any amendments referred to in paragraphs 1 to 3, the applicant shall identify them and indicate the basis for them in the application as filed. If the Examining Division notes a failure to meet either requirement, it may request the correction of this deficiency within a period of one month.
修正必須指出依據的範例:
EP1676234
EP2329349
4.2 In examination proceedings
The question of allowability of amendments is legally a question of whether the application as so amended is allowable. An amended application must of course satisfy all the requirements of the EPC including, in particular, inventive step and the other matters listed in B-XI, 3.6 (see also C-III, 2). Also, however, especially when the claims have been substantially limited, the examiner should bear in mind that the following questions may require special consideration at the amendment stage.
(i) Unity of invention
Do the amended claims still satisfy the requirements of Art. 82? If the search report seems to reveal lack of novelty or inventive step in the concept common to all the claims, but the amended claims do not necessitate further search, the examiner should consider carefully whether an objection of lack of unity is justified at this stage of the proceedings (see F-V, 8). If, however, the claims lack a common inventive concept and a further search is necessary, objection should be raised.
(ii) Agreement of description and claims
If the claims have been amended, will the description require corresponding amendment to remove serious inconsistency between them? For example, is every embodiment of the invention described still within the scope of one or more claims? (see F-IV, 4.3). Conversely, are all of the amended claims supported by the description? (see F-IV, 6). Also, if the categories of claims have been altered, will the title require corresponding amendment (see H-V, 8)?
審查時,檢索報告可能反映出新穎性與進步性的議題,而面對新穎性與進步性的修正不得引起進一步檢索(這是主要要注意的規定),並需要考量是否符合單一性,如果有違反規定的問題,將提出核駁意見。修正後,應注意是否說明書、請求項、名稱需要對應修正,包括檢視是否被說明書支持。
Ron
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