When President Batistelli visited London in 2010, Jenkins partner Hugh Dunlop asked whether his predecessor's proposals of September 2009 for "a stricter policy on allowing amendments in examination" are still being considered.
We have written in these pages about how current practice could barely be more strict (see Patent issues, Autumn 2009 page 14 and Summer 2010 , page 8). Mr Batistelli gave a politician's answer, promising consultation before any specific change. In the meantime, we are finding that when it comes to examiner objections, "There is but one step from the sublime to the ridiculous."1
We present our top 3 favourite objections.
In third place - a broadened claim is "unsearched"
An unsearched subject matter objection purely on the basis that the scope of a broader amended claim "relates to non-searched subject matter that does not combine with the originally claimed invention to form a single general inventive concept".
We find nothing in Rule 137(5), the case law or the EPO Guidelines to support this objection. It seems to us axiomatic that the search against a narrower version of a claim must also cover the broadened version, and that the latter must also relate to subject matter that shares a single general inventive concept with the former.
In second place - division into two parts or death: the judgment of Solomon
"Failure to use the two-part form in the present case will lead to an objection under Article 84 EPC and ultimately to a refusal of the application."
This is a far cry from Guideline C-III, 2.3.2, which says "if it is sufficiently clear [from the indication of prior art made in the description which features necessary for the definition of the claimed subject-matter are, in combination, part of the prior art] . . . the two-part form should not be insisted upon."
And the Jenkins award for the most ridiculous objection
"The amendments filed . . . introduce subject-matter which extends beyond the content of the application as filed, contrary to Article 123(2). . . . In claim 1 as filed a comma has been introduced . . ."