T 2194/22 - On res judicata and the binding effect of ratio decidendi

Key points

• This is a lengthy decision, and the second appeal in this opposition. The Board in the first decision held an auxiliary request to be inadmissible. The higher-ranking request was held to violate Art. 76(1) EPC. The auxiliary request at issue was filed during the oral proceedings before the Board.
• The issue was that the range of at least 50 % but less than 100%, as recited in the claim, was held to be not disclosed in the application as filed, wich mentioned "at least 50%" (this did not exclude 100% as in the claim) and "a majority" (which excluded 50%, as permitted by the claim). 
• In AR-I, a number of features were extracted from a table, omitting two parameters from the table. This was held to violate Art. 123(2).
• AR-2 new added a feature to AR-1, namely the missing features from the table. The Board did not admit this request, as it was filed during the oral proceedings only. 
• AR-2 old added features to claim 1 as granted, but did not address the feature of the range of 50 - < 100%. Hence, this request was not allowable.
• AR-III amended the range in AR-2 into "at least 75-95%"
• Clearly, there is a clarity issue with the amended range "at least 75-95 %" instead of 75-95% as recited in dependent claim 3. That same issue causes a problem under Art. 76 EPC. 
•  The case was remitted for AR-3.
• "Auxiliary request III is neither discussed nor substantively evaluated in the contested decision, since auxiliary request I was found to be allowable by the opposition division. Moreover, none of the parties provided arguments on this request in their written submissions, and none of the parties objected to the remittal of the case to the opposition division."
• The minutes state that the parties agreed with the Board's intention to remit. Still, it protracted the procedure by almost 4 years. The Board could have dealt with at least the formal requirements (Art. 123(2), Art. 84) before remitting.
• After the remittal, auxiliary III became the main request, and a new auxiliary request 1 was filed that was in substance the same as the request AR-2 new previously held inadmissible by the Board. The Main Request was held not allowable under Art. 76 because of the change of the original range 75-95% to "at least 75-95 %", which was taken to mean "at least 75%".
• The proprietor then essentially re-filed AR-2 new, with some minor amendments. This request was admitted by the OD and found to be allowable.
• The Board: "The current main request (identical to auxiliary request 1 filed on 11 February 2022) is not inadmissible for procedural reasons even though it corresponds (see 2.1.1) to auxiliary request II "new", which was filed during the oral proceedings before the Board in T 2371/18 and not admitted in the earlier decision of the Board for procedural reasons."
• "The Board does not share the appellant's view that a Board's decision not to admit a request is in any case absolutely binding in post-remittal proceedings as res judicata even if the facts underlying the decision are not the same."
• After an extensive analysis: "the Board's "decision" not to admit auxiliary request II "new" filed on 28 April 2021 in the earlier appeal proceedings which was only based on procedural reasons is not an absolute bar for reconsideration of an identical or equivalent request in proceedings subsequent to remittal."
• " The fact that in the case on file the Board's decision in T 2371/18 not to admit auxiliary request II "new" filed before the Board on 28 April 2021 is not an absolute bar for reconsidering an identical or equivalent request in post-remittal proceedings does not exclude the applicability of the binding effect of the ratio decidendi pursuant to Article 111(2) EPC. The latter allows reconsidering the Board's findings in as far as the facts the previous decision is based upon are not the same. The binding effect under Article 111(2) EPC is not, therefore, detrimental the flexibility needed to respond to a change of the relevant factual and procedural circumstances of the case and to guarantee fair proceedings."
• "Thus, a party's submission, such as a claim request that was not admitted for procedural reasons in the appeal proceedings, in particular for being late filed, is inadmissible under Article 111(2) EPC in post-remittal proceedings if the relevant facts for non-admittance remain the same."
•  "in the opposition proceedings subsequent to remittal, the procedural and factual circumstances within the meaning of Article 111(2) EPC indeed changed in so far as the opposition division issued a preliminary opinion on 15 October 2021 in which it presented a new objection under Article 123(2) EPC against the then pending auxiliary request III. This request had previously been filed on 28 November 2018 with the proprietor's statement of grounds of appeal in T 2371/18. Auxiliary request III filed on 28 November 2018 was not assessed in the Board's decision T 2371/18 but formed the basis for the remittal. In pursuing this request when re-entering opposition proceedings, the proprietor did indeed follow on from the situation that existed at the end of the first appeal proceedings."
• "The Board finds that the opposition division's decision to admit auxiliary request 1 (filed on 11 February 2022) was justified because it does not impinge on the relevant procedural principles. Rather, that request was a legitimate response to the new objection raised for the first time by the opposition division (see above 2.4.8), and it does not prejudice procedural economy."
  
  
• The Board, in a rather abstract analysis: "the binding effect following from the principle of res judicata is not always clearly distinguished from the binding effect of the ratio decidendi pursuant to Article 111(2) EPC in the case law of the Boards of Appeal, and the decisions are sometimes not consistent as to which principle applies in specific circumstances (see, for example, T 1545/08, Reasons 11 and 12 compared to T 308/14, Reasons 1.2 and 1.3). The differences between the binding effect of these principles are examined in the following (see points 2.2.4 and 2.2.5 below) for the case at hand." ...
•  " the principle of res judicata implies that the conclusive decision on a specific request is an absolute bar for reconsideration, i.e. irrespective of whether the facts are the same " ...
  
•   "The effect of res judicata has to be distinguished from the binding effect of the ratio decidendi"
• "The binding effect of the ratio decidendi is on the one hand narrower as it is limited to proceedings on the same application or patent following a remittal of the case and as it only applies in so far as the facts are the same. However, on the other hand, it is broader in so far as it is related to matters not covered by the res judicata but encompassed by the underlying reasoning (ratio decidendi) in the remittal decision. This means that only matter which is not covered by the res judicata, i.e. which is not finally settled, is open for reconsideration in post-remittal proceedings in as far as the facts are not the same (T 689/19, Reasons 4.5; T 449/15, Reasons 2.5). In contrast, matter which is finally settled is absolutely binding also in post-remittal proceedings, i.e. irrespective as to whether the facts are the same."
• As a comment, the above may be an accurate summary of the current case law, it also shows how complex the case law has become on this point. 
• It is remarkable that one of the two closely related principles is codified in the EPC, and the other one, in a sense, the stronger one, can not be found in the text of the EPC.
  
  
•  Separately: "the case law of the Boards of Appeal is not uniform on whether a Board is indeed competent to review such a (positive) decision of admittance in the same manner as a (negative) decision not to admit, i.e. whether the correct principles for exercising the discretion were applied in a reasonable way (G 7/93, Reasons 2.6). A review on the correct exercise was carried out in some decisions (T 960/15, Reasons 4 to 7; T 2197/11, Reasons 3.2.2 to 3.2.3; T 858/17, Reasons 2.4 to 2.6; T 572/14, Reasons 2.4 to 2.5; T 1209/05, Reasons 2.2 to 2.4), while others disregarded a review per se (T 617/16, Reasons 1.1.1; T 2049/16, Reasons 3.2; open in: T 467/15, Reasons 3.1; see also Case Law of the Boards of Appeal of the EPO, 10th edition, V.A.3.4.4). However, this discrepancy does not become relevant if - as in this case (see point 2.5.4 below) - the admittance of the request was justified when applying the correct principles."
  
  
• The patent was granted on a divisional application filed in 2012, with filing date in 2005. 

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t222194eu1