T 0222/11 - Res iudicata

Key points

• The patent proprietor submitted that submitted that the principle of res iudicata applied to the present case, because the (same) opponent had already submitted the same facts and arguments in a previous case leading to decision T 283/11, wherein the product claims had been found allowable. The Board does not accept this argument, if only because the claimed subject-matter is different, because the current patent is directed to a second medical use.

EPO T 0222/11 -  link 

Res iudicata

9. Appellant I [patent proprietor] submitted that the principle of res iudicata applied to the present case, because appellant II [opponent] had already submitted the same facts and arguments in a previous case leading to decision T 283/11 of 5 November 2014. The board hearing that case had already investigated these facts and arguments and decided that the subject-matter of the claims under consideration met the requirements of the EPC. Re-opening an investigation of this matter in the present case was contrary to the criteria established in decision T 167/93 (OJ EPO 1997, 229, point 2.5 of the Reasons), in particular since the claimed subject-matter in the present case was very similar to that under consideration in decision T 283/11 supra.

10. Res iudicata is a generally recognised principle in the contracting states and applied by the boards of appeal (see e.g. decisions T 167/93 supra and T 934/91,

OJ EPO 1994, 184, point 3 of the Reasons). According to decision T 167/93 supra, res iudicata is only at stake if several criteria are fulfilled, one being that "the issues of fact are the same" (see point 2.5 of the Reasons, criterion (d)). Similarly, in decision T 934/91 supra it was held that "...a final judgement by a court of competent jurisdiction [...] constitutes an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or privies" (see point 3 of the Reasons, emphasis added).

11. Decision T 283/11 supra concerns European patent No. 1 335 987, originating from European patent application No. 01991753.3, which is different from and unrelated to the patent in suit (see bibliographic data and section I of decision T 283/11). Moreover, the subject-matter of claim 1 of the sole request before the board differs significantly from that of claim 1 underlying decision T 283/11 supra, in that it refers to a second medical use of deposited MVA-BN and derivatives thereof for treating neonatal animals, wherein the virus abortively infects the claimed patient group, thereby inducing or enhancing the maturation of the immune system, which maturation correlates with an increase in the number of dendritic cells and their precursors. Claim 1 underlying decision T 283/11 supra related solely to a product concerning the deposited MVA-BN and derivatives thereof (see section XVII of the Facts and Submissions). The subject-matter of claim 1 considered by the board in decision T 283/11 supra is therefore not the same as that of claim 1 now being considered by this board.

12. Accordingly, the principle of res iudicata does not apply and decision T 283/11 supra is therefore not a final judgement preventing this board from considering facts and arguments even if they were the same as those already submitted in decision T 283/11 supra. Appellant I's argument must therefore fail.