“Unsearched subject-matter” objections seem to be trending at the EPO these days.
This means that a claim amendment taken from the description is not admitted by the examiner because the amended feature was not covered by the search for prior art.
However, the EPO rules say that the search has to be done based on the claims, but with a view to the description and has to also cover features in the description that could be a reasonable basis for later claim amendments.
European patent drafting tips:
- Make sure all important add-on features of the invention are reflected in the dependent claims.
- Don‘t rely only on the description for support.
- Make sure you disclose possible fallback positions prominently in the description, ideally in the summary portion or at the beginning of the detailed description.
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