T 0449/15 - Art. 111(2) and res judicata

Key points

• A decision from 2016 which was not noticed by me back then. 
• It is the second appeal in the opposition proceedings. In the first decision, the case was remitted to the OD after finding that the main requests and AR 1 were not inventive basically because of insufficient proof of the asserted technical effect. The OD then revokes the patent. Patentee appeals, this time with better experimental evidence of the technical effect. At issue is AR-4 having only minor changes compared to the main request (the patentee admits this). The question is if res iudicata applies
• "Res iudicata is a generally recognised principle in the contracting states and acknowledged by the boards of appeal (see e.g. T 167/93, OJ EPO 1997, 229; J 3/95, OJ EPO 1997, 493; T 365/09, Reasons 2). According to the established case law of the boards of appeal, res iudicata means "a matter finally settled by a Court of competent jurisdiction, rendering that matter conclusive as to the rights of the parties and their privies ... Such a final judgement ... therefore constitutes an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or their privies" (see T 934/91, OJ EPO 1994, 184, Reasons 3)." 
• The part about "same parties" seems less relevant for EPO opposition proceedings. 
• " Whether the present board is prevented from considering subject-matter claimed in these appeal proceedings in view of res iudicata depends on the question whether "the same claim, demand or cause of action" (see above) is at stake. Hence, it is necessary to compare the subject-matter of claim 1 of the main request decided upon in T 449/13 and of auxiliary requests 4 and 5 pending before the board for consideration in these second appeal proceedings." 
•  " it is concluded that the amendments undertaken do not alter the subject-matter claimed in substance compared to the subject-matter finally decided upon in T 449/13, or the facts on which said decision was based. Consequently, the finding that the claimed subject-matter lacks an inventive step is res iudicata also for the subject-matter of auxiliary requests 4 and 5. Therefore, the board is prevented from deciding on this issue a second time." 
• " the order for remittal for further prosecution in T 449/13 does not preclude a conclusion of res iudicata for remitted subject-matter. Pursuant to Article 111(2) EPC 1973 [] if a board remits the case for further prosecution to the department whose decision was appealed, that department shall be bound, in so far as the facts are the same, by the board's ratio decidendi."
• The patentee is hoping that the new experimental report makes that the facts are no longer the same. If Art. 111(2) is exclusive, there is a good chance for the patentee to still get the claims allowed in the second appeal. 
• The Board: The "ratio" of a decision is the ground or the reason for making it, in other words, the point in a case which determines the outcome of the judgement (cf. T 934/91, supra, Reasons 2)." 
• "  The same binding effect applies to the board in the case of a subsequent appeal against a further decision of the department of first instance following remittal (self-binding effect, cf. T 21/89, Reasons 3.1)."
• "  The principle of res iudicata and that of the binding effect of the ratio decidendi pursuant to Article 111(2) EPC 1973 are not mutually exclusive, but complement one another. " 
• "  the binding effect of the ratio decidendi extends to matter which has not become res iudicata, but it only applies "in so far as the facts are the same". On the other hand, matter which has become res iudicata is not open for reconsideration following a remittal for further prosecution. In view of the fact that such matter is finally settled, the binding effect is not limited to the ratio decidendi, but also precludes a change of the "facts" within the meaning of Article 111(2) EPC 1973, e.g. by introduction of new documents (see also T 1063/92, Reasons 2.5; T 153/93, Reasons 3). Accordingly, if a board of appeal has issued a decision rejecting certain claimed subject-matter as not being allowable and has remitted the case for further prosecution in accordance with an auxiliary request, examination of the allowability of the rejected claimed subject-matter cannot thereafter be re-opened (cf. T 79/89, OJ EPO 1992, 283, Headnote I)." 
•  As an example of the binding effect of ratio decidendi not covered by res iudicata: a claim interpretation given by the Board for Art.83 is binding for the OD in a subsequent consideration of novelty and inventive step.
• The patentee requests a referral to the Enlarged Board of Appeal: " The board notes in this context that, since a decision given by a board orally becomes effective, binding and final by virtue of being pronounced, boards are generally very careful about what they announce in the course of oral proceedings and whether they render an interlocutory decision on a particular point which would prevent them from reconsideration of this point at a later stage, should the need arise." 
• As a comment, the rule in italics applies equally to the first instance departments: "a decision given by a [panel of the EPO] orally [during oral proceedings] becomes effective, [and] binding ...  by virtue of being pronounced". By the same token: " [rendering] an interlocutory decision on a particular point [prevents] [the decision-making body] from reconsideration of this point at a later stage" in (the same) proceedings before the EPO.
• The difference is that a first instance decision is open to appeal. An appeal decision is only open to a petition for review.
• " In the present case, the chairman announced during the oral proceedings that "the board was of the opinion that claims 1 of auxiliary requests 4 and 5 were res iudicata and not open to consideration in view of T 449/13". Consequently, no decision on this issue had been taken prior to the appellant's submission of the request for a referral to the Enlarged Board, and the board was therefore not prevented from considering this request." 
   

EPO T 0449/15

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/t150449eu1.html