Friday, 8 January 2010

T 51/08 – The EPO Won’t Read Between the Lines

As we have seen in my preceding post, the Board has rejected the sole set of claims on the grounds of res judicata. The applicant tried to save his application by pointing out that the dependent claims should be considered as “a kind of auxiliary request”. The Board is not prepared to accept this approach:
[…] It is well established practice that an applicant can file a main and auxiliary requests. However, if he wishes to do so, this has to be clearly indicated. The applicant has to identify which requests he wants to have examined and in which order.

Dependent claims are indeed potential fall-back positions in case the independent claim is not allowable. However, they cannot per se be considered as being submitted as independent claims and forming auxiliary requests, as long as they are not expressly requested and formulated.

Assuming that dependent claims are auxiliary requests would be pure speculation and would be in conflict with the principle of party disposition which is enshrined in A 113(2) EPC 1973 and according to which it is the applicant who sets the framework of the examination by his requests. [9] 

To read the whole decision, click here.