T 1764/17 - Insufficient number of dependent claims

 Key points

• The Board makes some remarks about dependent claims as granted.
• The Board: “the proprietor's right to amend the patent is limited by Rule 80 EPC to overcoming opposition grounds, and is not an opportunity to fix shortcomings of the granted patent, such as an insufficient number of independent or dependent claims to define all commercially viable embodiments, or to improve fallback positions in future revocation proceedings before a national court.”
• The case is discussed in the forthcoming Case Law 2020 supplement of the O (link)

T 1764/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t171764eu1.html

4. Admissibility of auxiliary requests 20, 20A, 21, 21A, 22, 22A, 22B.

As already indicated by the Board in its communication, only in exceptional cases can the replacement of a granted single independent claim by two or more independent claims be considered to be occasioned by a ground for opposition. An exception might arise if two granted dependent claims were linked in parallel to a single independent claim. Then the filing of two independent claims including each one of the two parallel claim combinations might be possible, see Case Law of the Boards of Appeal, 9th edition 2019 (CLBA), IV.C.5.1.5.b), thus allowing separate fragments of the scope of protection afforded by the patent as granted to be retained. However, this exception does not apply to the addition of an independent claim directed at an aspect of the invention that was not included in the granted set of claims. As set out in CLBA, IV.C.5.1.1 the proprietor's right to amend the patent is limited by Rule 80 EPC to overcoming opposition grounds, and is not an opportunity to fix shortcomings of the granted patent, such as an insufficient number of independent or dependent claims to define all commercially viable embodiments, or to improve fallback positions in future revocation proceedings before a national court.

In the present case, at least one of the two independent claims of all auxiliary requests 20, 20A, 21, 21A, 22, 22A, 22B is directed at subject-matter that incorporates new features extracted from the description, that might moreover be material for the issue of patentability. These include a face seal portion having a face seal that is at least partially elastic, so that it can move with the user's jaw when the user talks. These independent claims are thus not straight combinations of granted claims and the above exception does not apply.

For the above reasons the Board considers that the filing of the two independent claims in these requests is not justified by a ground for opposition, contrary to Rule 80 EPC. The Board thus decided not to admit auxiliary requests 20, 20A, 21, 21A, 22, 22A, 22B.