T 1775/18 - Dependent claims and auxiliary requests

 Key points

• In this examination appeal, the application files an auxiliary request after notification of the summons. In the request, a feature taken from dependent claim 3 as granted is added.
• “the appellant argued that the introduction in an independent claim of a feature taken from a dependent claim was not an amendment of its case which, under Article 13(2) RPBA 2020, required exceptional circumstances justified with cogent reasons. Such an amendment could not come as a surprise, since dependent claims were meant to define fallback positions. Moreover, dependent claim 3 formed part of the decision under appeal, as it had been discussed by the examining division in an obiter dictum.”
• The Board does not agree. “However, while it is true that dependent claims define fallback positions for certain purposes, in EPO proceedings they cannot be equated with auxiliary requests. Article 113(2) EPC requires the EPO to decide on an application in the text submitted to it, or agreed, by the applicant. This means that it is the applicant's responsibility to file an (amended) set of application documents that fully meet the requirements of the EPC, for example in the form of an auxiliary request. ”
• “Hence, if an applicant wishes to put forward as its case a fallback position as defined by a dependent claim, it has to file an amendment that turns that claim into an independent claim. For the sake of procedural efficiency, the RPBA sets limits on when such amendments can still be filed in appeal proceedings.”

T 1775/18

https://www.epo.org/law-practice/case-law-appeals/recent/t181775eu1.html

decision text omitted.