T 0351/19 - 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.

source http://justpatentlaw.blogspot.com/2022/10/t-035119-not-obliged-to-examine.html