T 1038/18 - (II) Art.83 and dependent claims

 Key points

• “The opposition division held in its decision that the requirement of Article 83 EPC was met because, first, the requirements were met by the corresponding independent claim 1 and a dependent claim only represented additional non-essential details of the invention and, second, any potential contradiction with claim 1 would represent a clarity issue, which was not a ground for opposition.
• The board, however, cannot follow the opposition division's arguments because the requirement of sufficiency of disclosure under Articles 100(b) and 83 EPC is not confined to the invention defined in independent claims and ... it also concerns the invention defined in dependent claims referring back to them. 
• In addition, the mere fact that the appellant's objection under Article 100(b) or 83 EPC is based on a possible contradiction and that a contradiction may give rise to an objection of lack of clarity under Article 84 EPC which does not constitute a ground for opposition does - contrary to the opposition division's view - per se not justify omitting consideration of the mentioned objection under Articles 100(b) or 83 EPC.”
• The Board: on the merits of the objection: “Therefore, only a strict literal reading of claims 1 and 7 of auxiliary request 3 without taking into account the limitations imposed by the technical features of the claimed subject-matter would lead to the contradiction alleged by the appellant [opponent].”
• In this case, if the objection would have had merits regarding dependent claim 7, cancelling dependent claim 7 would have addressed the issue, without any need to amend claim 1. 

T 1038/18

https://www.epo.org/law-practice/case-law-appeals/recent/t181038eu1.html

The opposition division held in its decision that the requirement of Article 83 EPC was met because, first, the requirements were met by the corresponding independent claim 1 and a dependent claim only represented additional non-essential details of the invention and, second, any potential contradiction with claim 1 would represent a clarity issue, which was not a ground for opposition.

The board, however, cannot follow the opposition division's arguments because the requirement of sufficiency of disclosure under Articles 100(b) and 83 EPC is not confined to the invention defined in independent claims and - as submitted by the appellant - it also concerns the invention defined in dependent claims referring back to them. In addition, the mere fact that the appellant's objection under Article 100(b) or 83 EPC is based on a possible contradiction and that a contradiction may give rise to an objection of lack of clarity under Article 84 EPC which does not constitute a ground for opposition does - contrary to the opposition division's view - per se not justify omitting consideration of the mentioned objection under Articles 100(b) or 83 EPC.