4.4.8 Dependent claims

In T 1060/04, the amended claim 1 resulted from a combination of claim 1 as granted and features of a number of dependent claims as granted. The appellant patentee had submitted the relevant claims to the board during the oral proceedings. On the question whether the patentability of the dependent claims had to be examined, the board held, inter alia, that the fact that an opposition directed to the subject-matter of an independent claim also implicitly covered subject-matter defined in claims dependent on the independent claim (see G 9/91, OJ 1993, 408, point 11 of the Reasons) did not necessarily mean that the parties and the board had to be prepared to assess the allowability and patentability of amended independent claims as granted, including the subject-matter of claims dependent on them, at any time during the proceedings (see also T 794/94).

In T 565/07 the appellant had filed multiple sets of claims ten days before oral proceedings. Claim 1 of the fourth auxiliary request contained claim 1 of the main request and, in addition, the features of a dependent claim. However, it went in a completely different direction from the second and third auxiliary requests. The board ruled that although patentees too should be able in principle, under R. 80 EPC, to limit a patent's subject-matter by including the features of a dependent claim in response to objections that the granted independent claim was not patentable, if they exercised that right repeatedly in a variety of directions – e.g. by filing requests in parallel or in sequence – the board would end up having to decide in which of several versions the patent was to be maintained. That would be at odds with Art. 113(2) EPC, which required the board to decide upon "the text submitted to it … by the applicant". In other words, it was up to the patentee to decide the text for further prosecution and also one or more sets of claims which in any event had to be in line with that decision and thus its chosen direction of limitation (see also T 382/96, T 446/00, T 1685/07) – especially if, as in this case, the additional change of direction occurred only in an auxiliary request filed just ten days before oral proceedings.

In T 67/09, the board rejected the appellant's view that auxiliary requests 1 and 2 were admissible because the amendments were essentially limited to a combination of granted claims the subject­matter of which had already been challenged in the proceedings at first instance. Given that only the patent as granted had been discussed in both the opposition and the appeal proceedings, neither the board nor the respondent had had any reason to look at the subject­matter of dependent claims when preparing for the oral proceedings, especially since no request directed to them had previously been filed (see also T 1752/09).

In the ex parte case T 569/08, the belatedly filed auxiliary request resulted from a combination of features derived from a number of original claims. The board observed that original dependent claims which had been searched were normally predestined to serve as fallbacks in the event that an independent claim was not allowable. However, that was not so throughout the entire proceedings since, depending on the procedural stage, amendments to the application might be subject to the discretion of the examining division or board. In the case at issue, the board considered it incompatible with due procedural economy to shift the subject-matter to be decided on in the appeal proceedings to subject­matter which could have been presented to the examining division and which would have to be examined as to inventive step for the first time by the board. Thus, even a combination of originally filed claims could be disregarded on appeal.

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