T 0351/19 - (II) Not obliged to examine the dependent claims

Key points

• In this appeal against a refusal decision, " The additional features of claim 1 of the first auxiliary request are taken from original claims 5, 6 and 7."
• The Board: "Formally, the dependent claims were addressed in the contested decision[...]. However, where an independent claim falls, the Examining Division is not obliged to examine the dependent claims, and where it chooses to comment on them, such comments may often be brief and somewhat incomplete,"
• "this appears to be the case here. For example, claim 6 is dismissed as defining only "further non-technical aspects", whereas in fact it defines inter alia the use of a beacon device, an identifier of a beacon device and [....] , all of which must be considered to be technical features."
• "If the first auxiliary request were admitted into the proceedings it would require the Board either to perform, for the first time, a detailed examination of this subject-matter or to remit the case to the Examining Division for further prosecution under Article 111(1) EPC, neither of which would be a procedurally efficient course of action."
• As a comment, many other patent offices require Examiners to specifically discuss all dependent claims. Such patent offices, on the other hand, typically do not permit the filing of auxiliary requests. 
• As a further comment, the EPO requires payment of (steep) claim fees in case of more than 15 claims. However, as observed by the Board, the EPO's current practice is that "where an independent claim falls, the Examining Division is not obliged to examine the dependent claims, and where it chooses to comment on them, such comments may often be brief and somewhat incomplete". 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t190351eu1.html

4.11 The additional features of claim 1 of the first auxiliary request are taken from original claims 5, 6 and 7. The appellant argues that the additional features, in combination, provide a single technical effect, namely to allow the customer to leave the outlet for a brief period without triggering a final payment. Even if this were accepted, this effect is achieved by the introduction of a plurality of features, such as inter alia receiving, via the network from the mobile device, second data including location data being an identifier of a beacon device, querying a database of registered beacon devices to determine whether the beacon identifier is external to the retail outlet, determining the location data of the second data is outside the retail outlet, storing a time value, waiting for a period to elapse and, when the period has elapsed without receiving third data including location data of a location within the retail outlet, proceeding with the generating of the final bill and the charging to the payment account.

4.12 This plurality of new features in claim 1 of the first auxiliary request introduces, in the Board's view, an additional degree of complexity which is inappropriate at a late stage in the appeal proceedings.

4.13 Formally, the dependent claims were addressed in the contested decision (Reasons, points 11.4 and 11.5). However, where an independent claim falls, the Examining Division is not obliged to examine the dependent claims, and where it chooses to comment on them, such comments may often be brief and somewhat incomplete, and this appears to be the case here. For example, claim 6 is dismissed as defining only "further non-technical aspects", whereas in fact it defines inter alia the use of a beacon device, an identifier of a beacon device and querying a database of registered beacon devices, all of which must be considered to be technical features.

4.14 If the first auxiliary request were admitted into the proceedings it would require the Board either to perform, for the first time, a detailed examination of this subject-matter or to remit the case to the Examining Division for further prosecution under Article 111(1) EPC, neither of which would be a procedurally efficient course of action.