Dependent claims 

In T 2094/12 granted claim 5, which was dependent on granted claim 1, was not opposed. Claim 1 as upheld by the opposition division combined granted claim 1 with the (non-optional) subject matter of granted claim 5. The subject matter of claim 1 of the main request was therefore based on "dependent subject matters" as referred to in G 9/91. According to this point: "...even if the opposition is explicitly directed only to the subject-matter of an independent claim of a European patent, subject-matters covered by claims which are depending on such an independent claim may also be examined as to patentability, if the independent claim falls in opposition or appeal proceedings, provided their validity is prima facie in doubt on the basis of already available information (cf. T 293/88, OJ 1992, 220). Such dependent subject-matters have to be considered as being implicitly covered by the statement under R. 55(c) EPC 1973 (now R. 76(2)(c) EPC)....". Thus in the case in hand because the opposition notice was explicitly directed to granted claim 1, it was implicitly also directed to the subject matter of granted claim 5, now claim 1 of the main request. The opposition division was thus also competent to in considering prima facie validity of the patent. The opposition division held that validity of the claims as upheld was not prima facie called into doubt by the evidence (documents) then on file. Therefore, in order to challenge this decision on its merits the appellant (opponent) must demonstrate why the division was wrong in this finding of prima facie validity and should have carried out a full examination. The review of the decision must take place under the same constraint, i.e. it must consider prima facie validity first, and only if that is not confirmed can a full examination take place.

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